Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Firstgate Internet A.G. of Im Media Park 5, 50670 Köln, Germany.

The Respondent is David Soung of 398 Columbus Avenue, Boston, Massachusetts 02116, United States of America.

The domain name at issue is:

firstgate.com

and the Registrar is:

Network Solutions, Inc.

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint on October 16, 2000, [electronic version] and on October 4, 2000, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is November 10, 2000.

On October 16, 2000, the Center transmitted via email to Network Solutions, Inc. ("NSI") a Request for Registrar Verification in connection with this case and on October 20, 2000, NSI transmitted by email to the Center its verification response confirming that the registrant is David Soung and that the contact for both administrative and billing purposes is also David Soung.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on November 10, 2000, to:

postmaster@firstgate.com;

nextnet@email.msn.com; and to

namehost@worldnic.com

a Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by November 29, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:

David Soung

398 Columbus Avenue #285

Boston

MA02116

United States of America

and to

Network Solutions, Inc

505 Huntmar Park Drive

Herndon,

VA20170

United States of America

A Response was received from the Respondent on November 26, 2000, [electronic version] and on November 29, 2000, [hard copy]. Acknowledgement of Receipt of Response was sent by the Center on December 1, 2000, to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings.

Having received on December 14, 2000, and January 3, 2001, respectively from Mr. Peter Chrocziel, Mr. Thomas L. Creel and Mr. David Perkins Declarations of Impartiality and Independence and Statements of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Peter Chrocziel and Mr. Thomas L. Creel were appointed Panelists and Mr. David Perkins was appointed as the Presiding Panelist. The Projected Decision Date was January 22, 2001. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.

4.1.1 Incorporation of the Complainant

The Complainant, Firstgate Internet AG of Cologne, Germany was incorporated on December 16, 1999.

4.1.2 Registration of the Complainant's Website

In anticipation of founding the Complainant, its Chief Executive Office, Norbert Stangl stated that on September 9, 1999, he registered the domain name firstgate.de.

4.1.3 Use of the Complainant's Website

Use of the Complainant's website using the firstgate.de domain name commenced on October 3, 1999, by Mr. Stangl, since both he and Rainer Schmitt [the Complainant's Chief Operating Officer] state that the limited liability company was not incorporated until December 16, 1999, (supra).

4.1.4 The Complainant's Business

The Complainant develops micro payment systems for digital products and services offered on the Internet through cellular and conventional phones. It is also involved in the sale and marketing on the Internet of digital products of all kinds. For example, these would appear to include providing the placing and retrieval of announcements and the provision of music, news, stock market quotations etc. The Complaint states that use of the FIRSTGATE name as a business name and as a trade name began on the date of its incorporation December 16, 1999, and that it "… began other uses in connection with its business in February 2000". The Complaint exhibits an advertisement placed by the Complainant using the FIRSTGATE name and mark in a magazine, Internet World for September 2000.

4.1.5 The Genesis of the Complainant's Name

Mr. Schmitt states that FIRSTGATE was chosen as the Complainant's corporate and trading name and has been applied for as a trademark because

"…it offers Internet merchants their first opportunity to receive payment for use of the digital contents of their websites, similar to a gatekeeper or toll collector."

4.1.6 The Complainant's TradeMark Applications

4.2.1 Mr. Soung's Activities

The Response states that the Respondent, Mr. Soung has made a hobby of computer games including Internet based games. The Response further states that Mr. Soung registered the domain name in issue on March 6, 2000 in order to protect his plan to develop his own computer game on an Internet based website.

4.2.2 The Genesis of the Domain Name in Issue

The Response explains that Mr. Soung decided to structure his site on a series of gate passageways. This was because he knew from experience that computer games are based on levels, otherwise known as gates. Those playing the game aim to win each level and progress to the next level, the step from one level to another being commonly known as a gate or gatekeeper. The gate is the obstacle, which can prevent the player passing from one level to another. It is, therefore, important for the player to pass the first gate.

4.2.3 The Response states that the concept of a gate is so common that many computer games sites use the word gate. The Response gives 6 examples, including traitorsgate.com and gamegate.com.

5.1.1 The Complainant contends that the domain name in issue is identical to the Complainant's FIRSTGATE name and mark, that the Respondent has no rights or legitimate interests in respect of that domain name and that it was registered and is being used in bad faith.

5.1.2 The Complainant's rights in the FIRSTGATE mark

First, the Complainant asserts ownership of the FIRSTGATE trademark by virtue of:

· its worldwide use of that mark;

· its use of the firstgate.de domain name; and

· its CTM and US trademark applications filed respectively in May and July 2000 [see above]

Second, the suffix .com is to be ignored for the purposes of paragraph 4a(i) of the Policy.

Third, FIRSTGATE is not a generic word nor is it descriptive of the Complainant's services.

Fourth, persons seeking to find the Complainant will naturally look under the domain name in issue and, whether or not the Respondent intends to cause confusion and disruption to the Complainant's business, confusion will inevitably arise.

5.1.3 Rights or Legitimate Interests

The domain name in issue does not resolve to an active website, despite the fact that it was registered in March 2000, some 8 months before the Complaint was filed.

5.1.4 Registered and Used in Bad Faith

First, the Respondent owns over 50 domain names, none of which are being actively used for websites. Those domain names include:

imaxcinema.com

igodzilla.com

satellitedigital.com

iraquarmy.com

singlegene.com

aidsgenome.com

metalplates.com

jackpotbonus.com

skykong.com

Second, when Mr. Schmitt of the Complainant attempted to access the domain name in issue on June 8, 2000, he was taken to the Great Domains.com website where the domain name in issue was stated to be for sale. There followed an exchange of emails between the Complainant and Great Domains and Mr. Schmitt of the Complainant offered US$10,000.00 to purchase the domain name. Eventually, the Complainant [using the email address, Ray Smith] contacted the Respondent directly and on June 15, 2000, the Respondent replied:

"Hello Mr. Smith

The domain name firstgate.com has been appraised with the potential of being worth $160,000 a year from now. My asking price would be $50,000. It has other potential buyers so I would not negotiate the price. If you are still interested in, please call me back. Thanks.

David"

The same day, Mr. Schmitt replied:

"Hello David,

50,000 $ is a lot of money for me, but anyway when can we fix the deal. Do you want to have the money in cash or by check. How should we proceed? Please call me or write an email.

Thanks

Ray"

But, despite reminders sent later in June and July, the Complainant says that the Respondent never replied. This is, in fact, incorrect [see below].

Third, the Respondent is a cybersquatter who buys domain names solely for the purpose of selling them for valuable consideration in excess of his documented out of pocket costs directly related to such domain names.

Fourth, because there is a pattern of conduct in the Respondent registering multiple domain names selected for their sales potential, rather than for the purpose of himself using them as domain names for websites, this evidences that the Respondent has registered the domain name in issue in order to prevent the Complainant from reflecting that mark as its domain name.

Fifth, that the Respondent is in breach of his warranty under paragraph 2 of the Policy that registration of the domain name in issue will not infringe the rights of any third party. In making that representation and warranty the Respondent had a duty before registering the domain name in issue first to have conducted an Internet search which would have put him on notice of the Complainant's rights in the FIRSTGATE name and mark.

The Respondent deals with each of the elements of paragraph 4(a) of the Policy in turn.

5.2.1 The Complainant's TradeMark

First, gate is generic to Computer Game Sites. The Response stated that the concept of a gate is so common that many computer games sites use the word gate. The Response gives 6 examples, including traitorsgate.com and gamegate.com.

Second, first and gate are generic to Computer Games. The Response identifies 7 examples, including First Strike and Timegate.

Third, gate is commonly used by game systems such as GAMEBOY, NINETENDO etc. Here the Response gives 40 examples, including Gate of Thunder and Golden Gate.

Fourth, there are numerous US computer software trademarks and trademark applications, which incorporate the word gate. The Response illustrates use of gate in US trademarks for computer software by some 12 entities, namely:

5.2.2 Rights or Legitimate Interests

In April 2000, the Respondent sought a partner to develop his ideas for the game site and has been developing the game site in his spare time. It is unrealistic to have expected the Respondent to have developed that site by the time he was first put on notice of the Complainant's existence in June 2000. Unlike the Complainant's firstgate.de website which merely promotes materials for its customers, designing and programming a computer game into a website is complex and takes many months. The Respondent relies upon his demonstrable preparations to use the domain name in issue in connection with bona fide computer game websites prior to being put on notice in June 2000, of the Complaint.

5.2.3 Registration and Use in Bad Faith

First, the Complainant's business is quite dissimilar to a computer game site and public confusion will plainly not arise. By analogy, identical trademarks are permitted to be registered by different proprietors for different goods and services. Here, the trade channels are very different.

Second, FIRSTGATE is not a notorious mark such that there may be greater likelihood of confusion.

Third, there are already third party FIRSTGATE or phonetically equivalent trade marks and domain names.

For example: