DECISION

Perot Systems Corporation v. Perots.com a/k/a Perotsystem.com

Claim Number: FA0105000097310

PARTIES

Complainant is Perot Systems Corporation, Dallas, TX, USA (“Complainant”) represented by John W. Patton, of Hughes & Luce, LLP.  Respondent is Perots.com a/k/a Perotsystems.com, Korea (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are "perots.com" and "perotsystem.com" registered with Network Solutions.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 24, 2001; the Forum received a hard copy of the Complaint on May 25, 2001.

On May 25, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "perots.com" and "perotsystem.com" are registered with Network Solutions and that Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 29, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 18, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@perots.com and postmaster@perotsystem.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Because "perots.com" and "perotsystem.com" are confusingly similar to trademarks in which Perot Systems has rights, Respondent has no rights or legitimate interests in respect of the domain names, and the Respondent’s bad faith is inherent, the domain names should be transferred to Perot Systems.

B. Respondent

Respondent has not responded.

FINDINGS

Complainant Perot Systems Corporation is a world-leader in the field of technology and business consulting and services, including systems management and systems integration.  Through use and development, Complainant has gained valuable rights in various trademarks, including Perot Systems® (hereinafter “Perot Systems”), perotsystems® (stylized) (hereinafter “perotsystems”), perot.com™ (hereinafter “perot.com”), and perotsystems.com™ (hereinafter “perotsystems.com”).  In order to protect its rights, Complainant has registered or applied for registration of each of these marks by the United States Patent & Trademark Office.

Since 1988, Complainant has continuously used the service mark Perot Systems in relation to computer related services, including web site implementation and hosting.  The mark was registered on the Supplemental Register of the USPTO in 1991, and transferred to the Principal Register in 1997.

Since as early as 1996, Complainant has used the domain names perot.com and perotsystems.com as trademarks.  These websites garner significant traffic for Complainant and serve as the company’s online contact with consumers.  Complainant filed a U.S. trademark and service mark application for each of these marks in January 1999. The applications are currently pending in the USPTO.  The applications seek registration of the marks for goods and services including:

· corporate publications in the field of computers;

· business consulting services in the fields of computer and related information technology;

· communication services, computer and telecommunications systems design; and

· developing, implementing, hosting and maintaining web sites for others by means of a global computer information network. 

Since 1996, Complainant has also used the service mark perotsystems (stylized) in conjunction with computer software design, web site design, and related services.  This mark was registered on the Principal Register in 1999.

Each of the domain names in question is registered under a name identical to the corresponding domain name:  the registrant of <perotsystem.com> is “Perotsystem.com”; and the registrant of <perots.com> is “Perots.com.”

Based on the registration information, it is apparent that the registrant of both domain names is the same individual.  The domain names were registered on the same day: April 3, 2001.  Each domain name is registered under the same assumed name: the respective domain name.  The registrant’s address for each of the domain names is exactly the same. Lastly, all contact information for each domain is precisely the same.

Respondent is not in any way associated with Complainant and is not authorized to use Complainant’s marks.

There is no active site associated with the domain names, and no goods or services offered in connection with the domain names.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The deletion of the word “system” and the addition of the letter “s” to Complainant’s established Perot Systems mark are insufficient to distinguish it from Complainant’s registered mark because Perot remains the dominant feature of the Respondent’s domain name.  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks).  Similarly, the deletion of the letter “s” from Complainant’s established Perot Systems mark is insufficient to distinguish it from Complainant’s registered mark.  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark).  Given the mark’s dominant presence in the domain names, the Panel concludes that the domain names "perots.com" and "perotsystem.com" are confusingly similar to the Complainant’s marks. 

Thus, Complainant has satisfied the burden set forth in Policy ¶ 4(a)(i) for both disputed domain names.

Rights or Legitimate Interests

Respondent has not undertaken any bona fide use in connection with the domain names, nor even set the domain names to resolve to any website.  As such, Respondent cannot claim rights or legitimate interests in the domain names under Policy ¶ 4(c)(i) or (iii) since these sections require either bona fide use or noncommercial or fair use of the domain name.  See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name). 

Respondent is not generally known by the PEROT or PEROTSYSTEM marks. Respondent is not in any way associated with Complainant and is not authorized to use Complainant’s marks. Therefore, Respondent cannot claim to be commonly known by the PEROT or PEROTSYSTEM marks or the "perots.com" and "perotsystem.com" domain names, as set forth in Policy ¶ 4(c)(ii). 

Therefore, the Panel determines that Respondent has no rights or legitimate interests in the domain name in dispute.  Complainant has satisfied the burden set forth in Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent has failed to use the domain names in connection with any web presence.  The lack of any use and the failure to respond to Complainant’s request for transference of the name, raises a legitimate question concerning the Respondent’s potential use of the subject domain names.  It is well established by UDRP precedent that passive holding of a confusingly similar domain name is evidence of bad faith under the UDRP.  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy); Guardant, Inc. v. Kim, D2001-0043 (WIPO Mar. 4, 2001) (finding bad faith where Respondent made no use of the domain names <skyteamcargo.com> and <cargoskyteam.com> and failed to respond to Complainant's transfer requests).

Therefore, the Panel concludes that Complainant has satisfied the burden set forth I Policy 4(a)(iii).

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

 

Accordingly, for all of the foregoing reasons, it is ordered that the domain names "perots.com" and "perotsystem.com" be transferred from the Respondent to the Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY  (Ret.)

Dated: June 25, 2001

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