Generic Top Level Domain Name (gTLD) Decisions

PEROT SYSTEMS CORPORATION
COMPLAINANT,

vs.

DOMAINSALE
RESPONDENT.

DECISION
Forum File No.:  FA0005000094725

  The above entitled matter came on for an administrative hearing on June 14, 2000 before the undersigned Arbitrator on the complaint of Perot Systems Corporation (Complainant) represented by John W. Patton, Esq. of (Hughes & Luce, L.L.P.), against DomainSale (Steven Weber) (Respondent) represented by Anthony J. DeGidio, Esq. (Calamunci, Groth, Joelson & Manore L.P.A.).  Upon the written submitted record, including the Complaint and Exhibits and Reply of Complainant and the Response of Respondent, I hereby render the following decision:

PROCEDURAL FINDINGS

Domain Name:  ROSSPEROT.COM

Domain Name Registrar:  Network Solutions, Inc.

Domain Name Registrant:  DomainSale

Date of Domain Name Registration:  February 28, 1999

Date Complaint Filed: May 8, 2000

Date Answer Filed:  June 2, 2000

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum (Forum) forwarded the Complaint to Respondent in compliance with Rule 2(a) and the administrative proceeding was commenced pursuant to Rule 4(c) in compliance with Rule 4(d).  The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION FOR ASSIGNED NAMES AND NUMBERS (ICANN) and Respondent that the administrative proceeding had commenced.  Respondent has now submitted a Response to the Forum within the twenty (20) days pursuant to Rule 5(a) which time has now expired.  The Complaint and Exhibits and Response and Exhibits were docketed and forwarded to the undersigned Arbitrator for decision.

On February 28, 1999, Respondent registered the domain name ROSSPEROT.COM with the domain name registrar Network Solutions, Inc., the entity that is the registrar of the domain name.  Network Solutions, Inc. verified that Respondent is the registrant for the domain name ROSSPEROT.COM and that by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any disputes regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution policy.  Neither the Complainant nor the Respondent has contested the jurisdiction of the Forum or the undersigned Arbitrator to resolve this controversy.

FINDINGS OF FACT

1. Respondent is a world leader in the field of technology consulting and services, including system management and system integration.  Respondent was founded by Ross Perot and others in 1988.  As co-founder, CEO, Chairman and President of Complainant, consumers associate Ross Perot with his name sake Complainant. 

2. As early as 1988 Complainant has used the domain name PEROT.COM.  This website garners significant traffic for Complainant and it serves as Complainant’s on-line contact for consumers.  Through use and development, Complainant has gained valuable rights in the domain name and mark PEROT.COM.

3. Complainant filed a U.S. trademark and service mark application for the mark PEROT.COM in January 1999.  The application seeks registration of the mark for goods and services including corporate publications in the field of computers and related information technology, business consulting services, communication services, computer and technology systems, communications systems design and developing, implementing, hosting and maintaining websites for others by means of a global computer information network.  The application is currently pending in the United States Patent and Trademark Office. 

4. As early as 1996, Complainant has used the domain name PEROTSYSTEMS.COM.  This website also receives significant traffic from computers.  Through the use and development, Complainant has gained valuable rights in the domain name and mark PEROTSYSTEMS.COM.  In order to protect its rights, Complainant filed a U.S. Trademark and Service Mark application for the mark in January 1999.  The application seeks registration of the marks for goods and services including corporate publications in the field of computers, business consulting in the field of computer and related information technology, communications services, computer and telecommunications systems and design and developing, implementing, hosting and maintaining websites for others by means of a global computer information network.  The application is currently pending in the U.S. Patent & Trademark Office.

5. Since 1998 Complainant has used the servicemark PEROT SYSTEMS in relation to computer related services, including computer and telecommunications systems integration.  The mark was registered with the U.S. Patent and Trademark Office in 1997, and is registered or pending registration in forty (40) foreign countries.

6. On February 28, 1999, Respondent Registered with Network Solutions, Inc. for a domain name ROSSPEROT.COM, which is the subject of this Complaint.  Respondent and Steven Weber have registered over 100 domain names including domain name ROSSPEROT.COM. 

7. Respondent’s domain name ROSSPEROT.COM is confusingly similar to Complainant’s domain names and marks PEROT.COM, PEROTSYSTEMS.COM, and PEROT SYSTEMS.  Respondent’s use of Complainant’s domain names and mark containing the name PEROT creates a likelihood of confusion and Complainant’s trademark users and customers are likely to be confused into believing that there is some affiliation, connection, sponsorship, approval or association between Respondent and Complainant when, in fact, no such affiliation or association exists. 

8. Respondent has no rights or legitimate interests in the domain name ROSSPEROT.COM due to the domain name consisting primarily of the name of Complainant’s founder Ross Perot and Complainant’s domain names and marks in which Respondent has no legitimate rights or interests.  Moreover, consumers seeking information concerning Complainant may easily key on ROSSPEROT.COM looking for Complainant and would be surprised not to find Complainant’s site.  Complainant is the owner of PEROT.COM, PEROTSYSTEMS.COM and PEROT SYSTEMS in which it has exclusive rights to use and license of said marks.

9. Moreover, the evidence establishes that Respondent is merely redirecting the traffic from ROSSPEROT.COM to FAMOLOGY.COM a site that provides “FREE Web-Based Email” and appears not to have taken any steps to create any legitimate interest in the domain name.  Additionally, Respondent’s primary business appears to be registering numerous domain names extensibly primarily for the purpose of cybersquatting.

10. The domain name ROSSPEROT.COM should be considered as having been registered by Respondent in bad faith due to the fact that circumstances indicate that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the mark, trademark or servicemark or to a competitor of Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.  See Rule 4(b)(i).

11. The domain name ROSSPEROT should be considered has having been registered by Respondent in bad faith due to the fact Respondent has intentionally attempted to attract internet users to its website by creating a likelihood of confusion with Complainant’s marks and domain names as to the source, sponsorship, affiliation or endorsement of its website.  The unauthorized and continued use by Respondent in interstate commerce of a domain name incorporating Complainant’s founders name as well as Complainant’s domain name and marks constitutes a use of a false designation of origin as well as a false description or representation that is likely to cause confusion, mistake or deception as to (a) the affiliation, connection or association between Complainant and Respondent and (b) the sponsorship or endorsement of Respondent’s website by Complainant.  See Rule 4(b)(iii).

12. Respondent’s activities constitute an infringement of Complainant’s rights in its domain names and marks PEROT.COM, PEROTSYSTEMS.COM and PEROT SYSTEMS and has caused and will continue to cause substantial and irreparable harm to Complainant and its business reputation and good will.  Complainant demands that Respondent transfer the domain name ROSSPEROT.COM to Complainant.

CONCLUSION

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding.  Having been duly selected and being impartial and neutral, the undersigned makes the following findings and conclusions:

1.         The domain name ROSSPEROT.COM registered by Respondent on February 28, 1999 is confusingly similar to Complainant’s domain names and marks PEROT.COM, PEROTSYSTEMS.COM and PEROT SYSTEMS, for which the U.S. trademarks and service mark applications by Complainant are pending before or have been obtained from the United States Patent and Trademark Office.  Complainant has all rights and interests in its domain names and marks PEROT.COM, PEROTSYSTEMS.COM and PEROT SYSTEMS.

2.         Respondent does not have any substantial rights or legitimate interests in respect to the domain name ROSSPEROT.COM. 

3.         Respondent has registered and used the domain name ROSSPEROT.COM in bad faith. 

DECISION

Based upon the above findings and conclusions and pursuant to Rule 4 (1) of the Rules of the Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANN’s Uniform Domain Resolution Policy, I hereby Order that:

1.         The domain name ROSSPEROT.COM registered by Respondent DomainSale (Steven Weber) be transferred forthwith to Complainant Perot Systems Corporation, and

2.         Respondent DomainSale (Steven Weber) shall cease and desist from any and all use of the domain name ROSSPEROT.COM.

Dated:  June 15, 2000                          Honorable Herman D. Michels, Arbitrator