Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is Stanford Microdevices, Inc., represented by Wilson Sonsini Goodrich & Rosati.

Respondent is Sheryl Morace, an individual proceeding pro se.

The domain name at issue is: <stanfordmicrodevices.com>.

The Registrar is Network Solutions, Inc.

The WIPO Arbitration and Mediation Center (the "Center") received Stanford Microdevices, Inc.’s complaint (the "Complaint") by email on March 16, 2001 and in hard copy on March 20, 2001. 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 Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Stanford Microdevices, Inc. elected a three-member Panel and made the required payment to the Center. The formal date of the commencement of this administrative proceeding was March 23, 2001.

On April 3, 2001, the Respondent timely submitted by email its Response to the Complaint; the hard copy was received on April 17, 2001. On April 25, 2001, after clearing for potential conflicts, the Center appointed Barbara Solomon and Richard Page as Panelists and David H. Bernstein as the Presiding Panelist in this matter. The Panel agrees with the Center’s assessment that the Complaint satisfies the requirements of the Policy, Rules and Supplemental Rules.

Complainant avers that it is a publicly owned company that has operated under the name Stanford Microdevices since at least October 1992. Under that name and mark, it offers various types of telecommunications equipment, electronic components for the transmission and receipt of voice or data, and electronic components for the wireless and wired telecommunications industries. It operates its website at <www.stanfordmicro.com>.

Complainant states that it owns the trademark "Stanford Microdevices" for its business, and has achieved substantial recognition and public exposure under that name. In that connection, Complainant has submitted a Nexis printout showing a list of newspaper articles referring to Complainant’s trade name dating back to April 1999 (with a handful of earlier articles dating back to April 1995). It further alleges that the domain name at issue (which Respondent registered on May 13, 2000) is identical to its "Stanford Microdevices" mark.

Complainant asserts that Respondent has no rights or legitimate interests in the domain name because Respondent has not used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, has not been commonly known by the domain name, and is not making a legitimate noncommercial or fair use of the domain name.

Complainant also states that Respondent has registered a number of other domain names using the trademarks of other technology companies, including <axcelistechnologies.com>, <openporttechnology.com>, <flowarewireless.com>, and <flowarewirelesssystems.com>. Axcelis Technologies is a semiconductor equipment manufacturer; Open Port Technology and FloWare Wireless Systems offer telecommunications products and services.

Complainant claims that Respondent registered the domain name at issue, and the other domain names referenced above, in order to hold the domain names for "ransom." Specifically, Respondent contacted Complainant by e-mail dated August 11, 2000, offering Complainant "the first opportunity to purchase this domain name before it is listed for sale on all national Internet web-site names for sale companies and directories." Respondent urged Complainant to "Act Now! Don’t let your domain name fall into the hands of your competitors." Despite repeated attempts to contact Respondent by telephone, Complainant’s counsel reached only a recorded message.

Complainant alleges that this conduct constitutes bad faith and that Respondent’s email proves that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for consideration in excess of her out-of-pocket costs directly related to the domain name.

In her defense, Respondent, who appears to be a student at Southern Oregon University, alleges that "Stanford" is not a registered trademark name, nor is "Microdevices," "Stanford Microdevices," "Stanfordmicrodevices," or <stanfordmicrodevices.com.>. Respondent further states that Complainant’s stock was not publicly traded until May 25, 2000, and that it did not develop substantial recognition in its mark until after it became publicly traded.

Respondent contends that the domain name was purchased for the purpose of building a directory of all the microdevice companies in the Stanford area, and then selling the directory, but that she has not yet done so because of other projects.

Finally, with respect to the claims that Complainant repeatedly attempted to contact her,

Respondent states that she did not get the messages because the address and phone number listed with Network Solutions, Inc. is not current.

Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a Complainant must prove each of the following:

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

(3) that the Respondent has registered and has been using the domain name in bad faith.

Respondent does not dispute that, under the Policy, the domain name is identical to Complainant’s mark. Rather, she contests the registration status of Complainant’s mark and its fame.

Respondent argues that "Stanford Microdevices" is not a registered trademark. The Policy though, is not limited to registered marks; rather, it protects any trademark. See, e.g., MathForum.com, LLC v. Weiguang Huang, Case No. D2000-0743 (WIPO August 17, 2000) (collecting cases). Given that United States law protects unregistered marks, Complainant (a United States company) can prevail under the first factor if it can show sufficient use of the mark in U.S. commerce to create common law trademark rights. Ford v. Kruzicevic, Case No. D2001-0059 (WIPO March 20, 2001).

Complainant has carried that burden. It has averred that it has used the mark "Stanford Microdevices" in U.S. commerce to identify itself and its goods and services for nearly a decade. The evidence submitted to the Panel, though mostly referring to "Stanford Microdevices" as Complainant’s trade name, tends to confirm that Complainant’s products and services are sold as "Stanford Microdevices" products and services. Respondent has not submitted any evidence to refute these assertions.

Also without merit are Respondent’s arguments that Complainant’s mark did not achieve substantial recognition until after her registration of the domain name. First, Respondent’s argument is no more than a conclusory allegation; Respondent has not presented any facts to substantiate that conclusion. Second, and in any event, the assertion is irrelevant. The Policy requires Complainant to prove that it has trademark rights, not that its mark is famous or well known (although the strength or renown of its mark could affect analysis of the other elements of the Policy). Here, Complainant has adduced sufficient evidence to show that it has common law trademark rights, and thus Complainant has sustained its burden under the first factor.

In light of Respondent’s registration of domain names reflecting the names of other companies in Complainant’s line of business, the Panel cannot credit Respondent’s explanation that she registered the domain name at issue to create a directory of microdevice companies in the Stanford area. Even were this true, Respondent has offered no evidence that she has made any preparations to use the domain name in connection with a bona fide offering of goods or services.

Although a complainant retains the burden of persuasion on all elements of the Policy, a respondent must offer some evidence of legitimate use once the complainant has made a prima facie case that no legitimate interests exist. In other words, where averments in a complaint are sufficient to justify a conclusion that a respondent lacks a legitimate interest in a domain name, the respondent has the burden of production to rebut the complaint. See, e.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, Case No. D2000-1306 (WIPO January 24, 2001); Pharmacia & Upjohn Ab v. Sipa, Case No. D2000-0309 (WIPO August 7, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO, June 29, 2000). This rule is particularly appropriate in cases such as this one, where Respondent alleges that her use is legitimate under Paragraph 4(c)(i) of the Policy because she is preparing to make a bona fide use, a matter uniquely within her knowledge. The nature of the relevant evidence will vary depending on the nature of the domain name and of the proposed business at issue, but may include business plans, use of the name on a non-Internet based business, or any other evidence reasonably related to preparations for legitimate use. See, e.g., Goldline International, Inc. v. Gold Line, Case No. D2000-1151 (WIPO January 4, 2001) (preparations to develop web consulting services created legitimate interest in laudatory domain name available for use in web consulting field); PRIMEDIA Special Interest Publications Inc. v. Treadway, Case No. D2000-0752 (WIPO August 21, 2000) (preparations to develop photography-oriented website created legitimate interest in particular domain name <shutterbug.com>.).

Instead of offering any evidence of preparations to make a legitimate use of the domain name, Respondent admits that she has taken no action with respect to the domain name.

Moreover, as reflected by Exhibit G to the Complaint, Respondent, at the time she registered the domain name knew of Complainant, knew that Complainant did business under the name Stanford Microdevices, and recognized that the domain name was identical to Complainant’s trading name. Respondent also acknowledged that an Internet user seeking to locate Complainant would "do so by typing your company’s full name in the address bar." By these statements, Respondent has admitted that the domain name refers to Complainant and that any use of the name by Respondent would cause confusion. Under such circumstances, Respondent cannot show any legitimate rights in the domain name. Motorola, Inc. v. NewGate Internet, Inc. Case. No. D2000-0079 (WIPO April 20, 2000).

Based on the above, Respondent lacks a legitimate interest in the domain name under Paragraph 4(c)(i) of the Policy.

Paragraph 4(b)(ii) of the Policy declares registration to be in bad faith if it is done "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the registrant has] engaged in a pattern of such conduct." Complainant has submitted evidence that Respondent has in fact engaged in a pattern of registering domain names corresponding to the names of several other competitors in Respondent’s line of business. Respondent has provided no explanation for this behavior, and the only logical inference is that Respondent was engaged in a bad-faith effort to acquire domain names reflecting trademark owners’ marks.

In addition, Respondent offered the domain name at issue to Complainant, stating that Complainant should purchase the domain name in order to avoid its sale to competitors. Although Respondent, like many a canny cybersquatter, did not name a figure, her offer of sale and her threat to put the domain name up for auction to the highest bidder, without any express statement that the asking price will be limited to the costs of registration, justifies an inference that she registered and used the domain name in bad faith in order to seek compensation in excess of her documented out-of-pocket costs directly related to the domain name. See Policy ¶ 4(b)(i).

The Panel concludes that Complainant has established bad faith registration and use.

For all of the foregoing reasons, the Panel decides that Complainant has met its burden of proof under ¶ 4 of the Policy: the domain name <stanfordmicrodevices.com> is confusingly similar to a trademark in which Complainant has rights, Respondent lacks a legitimate interest in that domain name, and Respondent has registered and used the domain name in bad faith. Accordingly, this Panel concludes that the domain name at issue should be transferred to the Complainant.

David H. Bernstein
Presiding Panelist

Richard Page
Panelist

Barbara Solomon
Panelist