DECISION

Perot Systems Corporation v. Harold Brown III

Claim Number: FA0105000097303

PARTIES

Complainant is Perot Systems Corporation, Dallas, TX, USA (“Complainant”) represented by John W. Patton, of Hughes & Luce, LLP.  Respondent is Harold Brown, Hermosa Beach , CA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are "urn2perotsystems.net" and "urn2perotsystems.org" 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 22, 2001; the Forum received a hard copy of the Complaint on May 23, 2001.

On May 24, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names "urn2perotsystems.net" and "urn2perotsystems.org" 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 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 13, 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@urn2perotsystems.net and postmaster@urn2perotsystems.org by e-mail.

On May 28, 2001, the Forum case coordinator received the following communication from the Respondent: “We have no intentions of using trademarked domains (sic) names.  Gain registration to the name by using The Registrant Name Change Agreement below: http://www.networksolutions.com/en_US/makechanges/rnca/agreement.html.  Given the response formalities required by Rule 5, this communication does not constitute a formal response.

Having received no formal 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

Complainant recently became aware that Harold Brown III registered the domain names "urn2perotsystems.net" and "urn2perotsystems.org." Because “urn2perotsystems.net" and "urn2perotsystems.org" 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 submitted an official response.

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.

Respondent registered the domain name on April 10, 2001.

Respondent has engaged in a pattern of registering other intentionally confusing domains.  The page appearing at the URL urn2altavista.com lists hundreds of domain names offered for sale by Respondent, including urn2altavista.com.  Respondent offers the following domain names for sale at urn2altavista.com:

            urn2abercrombieandfitch.net

            urn2adidas.com

            urn2amazon.com

            urn2americaonline.com

            urn2bananarepublic.com

            urn2barbie.com

            urn2bloomberg.com

            urn2bmw.com

            urn2burberry.com

            urn2burgerking.com

            urn2Ferrari.com

            urn2hotwheels.com

            urn2hyundai.com

            urn2lexus.com

            urn2louisvuitton.com

            urn2montblanc.com

            urn2oakley.com

            urn2victoriassecret.com

urn2Xerox.com

These domains are undisputedly offered for sale.  The heading on the first page plainly states “Domain Names for Sale” and the phrase “Make all offers at GreatDomains.com” appears at the bottom of each list.  Each list also contains the following statement: “This Search Engine/Domain Name Sales is a joint venture by Harold Brown and Nickolas Whelan.”  Respondent offers other infringing domain names for sale through the Great Domains site, including:

urn2acura.com for $1,000

urn2aol.com for $1,000

urn2gateway.com for $1,000

urn2greatclips.com for $1,000

urn2msnbc.com for $1,000

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

There are two requirements that a Complainant must establish under paragraph 4(a)(i) -- that Complainant has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

Complainant has provided evidence of US registration for its Perot Systems mark.  Complainant – as registered proprietor of the mark Perot Systems – has established the first requirement of this paragraph.

The second requirement is that the domain name be identical or confusingly similar to the marks.  The addition of the letters “urn2” to Complainant’s established Perot Systems mark is insufficient to distinguish it from Complainant’s registered mark because Perot Systems remains the dominant feature of the Respondent’s domain name.  Given the mark’s dominant presence in the domain name, the Panel concludes that the domain name is confusingly similar to the Perot Systems mark.  As such, Complainant has established the second requirement of this paragraph.  See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s mark AOL).

Thus, Complainant has satisfied the burden set forth in Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not undertaken any bona fide use in connection with the domain names, other than to offer them for sale.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).  This, in addition to Respondent’s communications on May 28, 2001 revealing no intention of using the domain names and a willingness to transfer the domain name, indicates that Respondent has no rights or legitimate interests in the domain names.  See Marcor Int’l v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent’s willingness to transfer the domain name at issue indicates that it has no rights or legitimate interests in the domain name in question).

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

Paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy sets out circumstances in which both registration and use in bad faith can be proven.

“Circumstances indicating that you have registered or you have 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name” Policy ¶ 4(b)(i).

“You have registered the domain name in order to prevent the owner of the trademark of service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct” Policy ¶ 4(b)(ii).

It appears in this case that both Policy ¶ 4(b)(i) and (ii) apply.  Respondent has made no attempt to create a legitimate interest in the domain names, but has simply added them to his stable of names for sale.  Respondent’s established history of registering distinctive domain names and his failure to use the disputed domain names other than to offer them for sale is evidence of Respondent’s bad faith registration and use of the disputed domain names.  See Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.); The Step2 Co. v. Softastic.com Corp., D2000-0393 (WIPO June 26, 2000) (finding that the Respondent’s attempt to sell the domain name in question on <greatdomains.com>, a domain name auction site, for $100,000 constitutes bad faith).

Therefore, the Panel concludes that Complainant has satisfied the burden set forth in 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 "urn2perotsystems.net" and "urn2perotsystems.org" 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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