Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

On April 21, 2000, the WIPO Arbitration and Mediation Center received from Complainant, Phoenix Technologies, Ltd., a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

The instant Administrative Proceeding was commenced on April 28, 2000.

The domain name in dispute is as follows: "phoenixtechnologies.com".

Respondent Phoenix Global Networks, Inc., formerly known as Phoenix Technologies, Inc., failed to respond to the complaint within the twenty (20) day period provided for in paragraph 5(a) of the Rules, and a "Notification of Respondent’s Default," dated May 19, 2000, was forwarded by WIPO to Respondent.

Complainant is engaged in the business of supplying system-enabling software solutions for PCs and connected devices. Complainant has been doing business under the mark "Phoenix Technologies" since at least as early September 17, 1979, and has applied to register the mark with the U.S. Patent and Trademark Office.

Complainant’s software, sold under the "Phoenix Technologies" mark, has been sold to more than 600 customers worldwide and is designed into more than 70 million PCs sold annually. Complainant was recently selected by "PC Magazine" as one of the top 100 companies in the PC industry.

On or about May 1998, Respondent registered the domain name "phoenixtechnologies.com" with Network Solutions, Inc. See Annex 1 to Complaint.

On October 26, 1999, counsel for Complainant wrote Respondent alleging that Respondent’s use of the name "Phoenix Technologies" constituted unfair competition and trademark infringement and demanding that Respondent cease using the name. See Annex 4 to Complaint.

On November 17, 1999, Respondent agreed to cease and desist from further use of the trademark "Phoenix Technologies." See Annex 6 to Complaint.

On November 22, 1999, Respondent’s counsel forwarded to Complainant papers filed with the Arizona Department of Corporation relating to the incorporation of a new company, Phoenix Global Networks, Inc., and represented to Complainant that Respondent would begin doing business under that name and cease all usage of the name "Phoenix Technologies." See Annex 7.

Contrary to its agreement and representations, Respondent continued to use the name "Phoenix Technologies."

On May 26, 2000, Respondent’s counsel filed with WIPO a "Statement of Non-Opposition" to the Complaint. Counsel indicated that Respondent "is not opposed to and believes that it is appropriate to transfer the domain name [in dispute] to the Complainant pursuant to paragraph 3 of the Policy."

In view of Respondent’s "Statement of Non-Opposition" to transfer of the domain name, the Panel orders that the contested domain name be transferred to Complainant, consistent with the provisions of paragraph 8 of the Policy.

Jeffrey M. Samuels
Panelist

Dated: June 16, 2000