Generic Top Level Domain Name (gTLD) Decisions

The Complainant is FormLinc Information Systems d/b/a GroupLink, Bountiful, UT, USA ("Complainant") represented by H. Dickson Burton. The Respondent is Credit Suisse Group, Zurich, CH ("Respondent") represented by Bradley B. Geist, of Baker Botts LLP.

The domain name at issue is "grouplink.com," registered with Network Solutions.

The undersigned certifies that they haved acted independently and impartially and to the best of their knowledge, have no known conflicts in serving as panelists in this proceeding.

Bruce E. Meyerson, Jerry Kaufman and Richard W. Hill as Panelists.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 23, 2001; the Forum received a hard copy of the Complaint on February 23, 2001.

On February 26, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name "grouplink.com" is registered with Network Solutions and that the 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 February 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 19, 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@grouplink.com by e-mail.

A timely response was received and determined to be complete on March 19, 2001. The Complainant submitted a timely additional submission on March 26, 2001.

The Respondent submitted a further response on March 30, 2001 and the Complainant submitted a further response on April 2, 2001. Although these filings were untimely, in the exercise of its discretion, the panel has considered them.

On April 3, 2001, pursuant to Respondent’s request to have the dispute decided by a Three Member Panel, the Forum appointed Bruce E. Meyerson, Jerry Kaufman and Richard W. Hill as Panelists.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

Although CSG concedes that its domain name is identical to Complainant's mark, it asserts that its use of the domain name is legitimate because it registered the name for the purpose of creating a portal to its internal website used to link the company's 80,000 worldwide employees. Thus, CSG argues that "Grouplink" is a name that ties together the word "group" from the company's name Credit Suisse Group, and "link" as the link to its intranet. CSG denies that it acted in bad faith as it contends that when it registered the disputed domain name, it was unaware that Complainant held a protected interest in the name GroupLink, and, moreover, it should not be obliged to undertake such a search in the course of registering a domain name. CSG claims that in any event, it may still use the domain name "grouplink.com" because the use of this name in connection with financial services would not be confusingly similar to the Complainant's trademark in the software industry.

Complainant began using the mark GroupLink in 1995. In 1997 the United States Patent and Trademark Office granted Complainant rights to the mark for "computer software for electronic messaging, workflow, routing and office automation." Complainant claims to have devoted substantial time, effort and money to promoting the GroupLink trademark with software. CSG registered the domain name "grouplink.com" in July 1997 for the purpose of creating a portal to its internal website to link the company's 80,000 worldwide employees. CSG acknowledges that when it registered the site it did not do a search of trademarks registered with the United States Patent and Trademark Office. The evidence concerning the actual use of the disputed domain name is not entirely clear. As far as the Panel can determine, CSG has used the disputed domain in different ways at different times. CSG appears to have used the disputed domain name both to point to its normal home page and to point only to an internal site not accessible outside CSG. At the time the dispute was filed, the disputed domain name did not point to an active web site accessible by the Panel.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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.

The parties agree that the "grouplink.com" domain name is identical to the GroupLink trademark.

Although Respondent asserts that it registered the domain name with the intention of creating a portal to its internal website, and it furthermore asserts that it has actually used the domain name to point to its internal website, according to the Complainant, it has not done so consistently. According to Complainant, the domain name has been used to link to Respondent's home page, not to its own intranet. Although CSG maintains that its use has been as a portal to its intranet, it does not deny this allegation. Moreover, Complainant has submitted an affidavit asserting that it has received many reports of confusion from vendors and others regarding this misdirection.

The Panel holds that the Complainant has not fulfilled its obligation to prove that CSG has no legitimate rights or interests, and, furthermore, that CSG has provided sufficient evidence to show that prior to notice of this dispute, it actually used or prepared to use the disputed domain name in connection with a fair business interest (an internal web site or link to its home page) which constitutes a legitimate bona fide offering of goods and services within the meaning of clause 4(c)(i) of the Policy.

The issue of bad faith is the most difficult issue in this case. Although Respondent acknowledges it was unaware of Complainant's trademark at the time it registered its domain name, it could easily have learned of the trademark and thereby have avoided this dispute. Nevertheless, CSG's failure to verify the existence of Complainant's trademark is not, alone, evidence of bad faith. Indeed, the examples of bad faith set forth in Paragraph 4(b) of the Policy do not appear to apply in this case.

Furthermore, it is clear from the travaux preparatoires of the Policy that mere failure to conduct a trademark search does not constitute bad faith. Indeed, the closest equivalent to a legislative history for the Policy can be found in the April 30, 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc). This report states at paragraph 103:

And the report states at paragraph 105:

A situation quite similar to this one arose in Asphalt Research Technology, Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000). In Asphalt Research the complainant owned a trademark for the word "ez street" for use in association with asphalt products. The disputed domain name "ezstreet.com" was registered by a company that was in the business of developing web sites and the company claimed that it intended to use the web site for personal financial matters.

The panel found that that the mark "ez street" was not a well known name, and that many others were using the word "ezstreet." Because there was no danger in confusing the protected trademark with the identical domain name, the respondent's use of the domain name for its own business purposes was held not to be in bad faith.

The same appears true here. The term "grouplink" is used by other entities and has been protected by Complainant only in the context of "computer software for electronic messaging, workflow, routing and office automation." There is little probability that users who inadvertently come to the CSG home page will be confused and misdirected to purchase CSG products instead of Complainant's products.

Although the Complainant cannot establish bad faith within the meaning of the Policy we nevertheless observe that were we free to balance the equities, as between the two parties, they strongly favor the use of the domain name by the Complainant. First, the domain name is identical to the registered mark of the Complainant. Second, Respondent registered the domain name without determining whether the domain name interfered with the rights of any other party. Third, if the purpose of the domain name is for use as a portal to the Respondent's intranet for its own employees, there are a variety of other domain names that could easily serve that purpose. As between Complainant and Respondent, the domain name has far greater practical importance and significance to Complainant than it does to Respondent

For the reasons set forth here, the Complaint is dismissed.