Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Palm, Inc.5470 Great American Parkway, Santa Clara, California 95052, USA

Respondent is South China House of Technology Consultants Ltd, Unit 904, Block B, Sea View Estate, 2-8 Watson Road, North Point, Hong Kong

Domain Name ispalmax.com.

Registrar is Network Solutions Inc.

The Complaint was received by WIPO by email on November 1, 2000 and in hardcopy form on November 6, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that palmax.com ("the Domain Name") was registered through Network Solutions Inc. and that South China House of Technology Consultants Limited ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On November 14, 2000 WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was December 3, 2000. No response having been received, on December 6, 2000 WIPO issued to the Respondent a notice of default.

The Panel was properly constituted. The undersigned Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s decision is December 26, 2000.

The Complainant is the well known proprietor of the PALM brand of handheld computers.

The Complainant began using the name and mark PALM as a trade name, trade mark and service mark in connection with handheld computers and software for handheld computers in 1992. Sales of its products have been very extensive as has the level of its advertising and promotion expenditure.

The Complainant has a number of registrations incorporating or including the word PALM, namely PALM COMPUTING, PALM OS, PALM.NET, PALM CONNECT, PALM PRINT, PALMMODEM and PALMPOINT.

In passing, the Panel notes that while the Complaint states that the Complainant commenced use of the mark PALM in 1992, it claims first use of PALMPOINT on October 20, 1991. Nothing turns on this.

In addition, the Complainant has applications pending for the marks PALM III, PALM IV, PALM V, PALM VI, PALM VII, PALM VIII, PALM X, PALM X1, PALMGLOVE, PALMNET, PALMPACK, PALMPOWER, PALMSKINS, PALMSOURCE, PALM & logo, PALMREADER PALMPOWERED and SIMPLY PALM.

The Complainant conducts business on the Internet through domain names incorporating the PALM mark including palm.com and palm.net. The domain name palm.com was registered on September 18, 1992.

On July 1, 1996, the Respondent registered the Domain Name. The Complainant exhibits to the Complaint extracts from the Respondent’s website, which indicate that the Respondent trades by reference to the name PALMAX and markets handheld computers under that name. There is nothing in the evidence to indicate when the Respondent commenced business under the name, but for present purposes the Panel assumes that it would have been in or around the date when the Domain Name was registered, i.e. back in July 1996. The Respondent’s website demonstrates extensive use of the trade mark PALMAX for its products and extensive use of the expression "PALM-SIZE" in relation to those products. While the prices are all quoted in Hong Kong dollars and while the site is predominantly directed to the Hong Kong market, it does contain a reference to ‘international’ sales information.

On January 6, 1999 the Complainant filed a Complaint against the Respondent in a United States Federal District Court claiming, inter alia, trade mark infringement on the part of the Respondent. In that Complaint the Complainant stated "Defendants market PALMAX’s products through various websites, publications and attendance at trade shows, such as the 1998 Consumer Electronics Show held in Las Vegas, Nevada. On October 12, 1999 the Court issued a Default Judgment of Permanent Injunction. The Injunction permanently enjoins use by the Respondent of inter alia the PALMAX trade mark.

The Complainant relies upon the undeniable fame of its PALM mark and its family of PALM marks. It points out that the Respondent is using the Domain Name in relation to substantially identical products, namely handheld computers and that the fame of the PALM mark and family of marks is such that "consumers encountering the Respondent’s Domain Name will be confused and will mistakenly assume that the palmax.com website and associated products originate with, or are sponsored by, or are associated with the products or services offered by the Complainant under its family of PALM marks and corresponding domain names".

The Complainant asserts that the Respondent is infringing its trade mark rights. It points to the Default Judgment referred to above. It asserts that the Respondent has no rights or legitimate interests in the Domain Name. It points out that the Respondent registered the Domain Name some four years after the Complainant began using its PALM and PALM family of marks. It asserts that the Respondent chose the Domain Name knowing of the Complainant’s rights and did so to trade off consumers’ recognition of the Complainant’s PALM and PALM family of marks and the goodwill associated therewith.

The Respondent has not responded.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

The fact that the Respondent has not responded does not mean that the Panel is obliged to accept the Complainant’s assertions without question. It is still necessary for the Complainant to prove what needs to be proved.

The Domain Name comprises PALM with the addition of the letters "ax". Given that the Respondent appears to trade in competition with the Complainant and given the undeniable fame of the Complainant’s name and family of PALM marks, the Panel accepts that there is scope for confusion.

The Panel takes the view that the threshold for the Complainant in respect of paragraph 4(a)(i) of the Policy is relatively low and that that paragraph is there principally to ensure that the Complainant has a bona fide basis for making the Complaint. The Panel is in no doubt that the Complainant has a bona fide basis for making this Complaint.

Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

Paragraph 4(c) of the Policy provides a Respondent with examples of circumstances which if shown to be present shall demonstrate the Respondent’s rights or legitimate interests to the Domain Name. The first two of those circumstances are relevant here and read as follows:-

(i) Before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods of services;

(ii) You (as an individual, business, or other organisation) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights.

As to (i) it is clear that the Respondent has been using the Domain Name in connection with an offering of goods or services, which dates back prior to the launch of this Complaint and indeed prior to the Court action referred to above. It seems to the Panel that the issue for the Panel is whether the offering of goods or services can be said to have been bona fide. And to a certain extent that depends upon what the Respondent’s motives were at the time when the Domain Name was registered.

As to (ii), while the Respondent’s full name is South China House of Technology Consultants Limited, it is plain that on the website it uses PALMAX as a trading name. While the words "bona fide" do not feature in this sub-paragraph, the Panel takes the view that they should be read into it and that a Respondent known by a name corresponding to the Domain Name should not be able to take advantage of this sub-paragraph if the name was adopted with mala fide intent.

Is it to be assumed that the Respondent, a Hong Kong trader, should have known of the Complainant’s products back in 1996? Even if it is to be assumed that the Respondent was so aware back in 1996, is the Respondent to be taken to have known that using the name and mark PALMAX was necessarily an infringement of the Complainant’s rights? Might the Respondent have thought that PALM was of itself too descriptive of palm size computers to afford trade mark rights in the word and/or that in any event the addition of the letters "ax" would be sufficient to distinguish the Respondent’s products from the Complainant’s products?

These are difficult questions for the Panel to resolve. The manner in which the name PALMAX is used on the Respondent’s website is manifestly and distinctly different from any style adopted by the Complainant. Moreover the Default Judgment of the Federal Court, being a Default Judgment, has no discussion of the merits of the matter.

The stated objective of the Policy is very narrow. It is concerned to deal with cybersquatting and not commonplace trade mark infringement issues and/or unfair competition issues, however flagrant.

All in all the Panel concludes that this dispute is a trade mark infringement and/or passing off dispute more appropriate to the Courts than to the Policy. The Panel cannot categorise it as a case of cybersquatting.

The Panel finds that the Complainant has not proved that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Given the finding under the previous heading that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name, the Panel cannot make a bad faith finding. In so holding, the Panel is not expressing the view that the Respondent is not infringing the Complainant’s rights, but simply that this is not a case of cybersquatting.

The Panel finds that the Complainant has not proved that the Domain Name was registered and is being used in bad faith.

The Complaint is dismissed.

Tony Willoughby
Single Panelist