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Generic Top Level Domain Name (gTLD) Decisions |
Electronic Data Systems Corporation v.
Stephen Page
Claim Number: FA0205000114365
Complainant
is Electronic Data Systems Corporation,
Plano, TX (“Complainant”) represented by Abigail
Rubinstein, of Baker Botts LLP. Respondent is Stephen Page, Dallas, TX (“Respondent”).
The
domain name at issue is <eds.biz>,
registered with 1stDomain.Net.
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
Harold Kalina (Ret.) as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on May 21, 2002; the Forum
received a hard copy of the Complaint on
May 23, 2002.
On
May 23, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 12,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
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 July 9, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Judge Harold Kalina (Ret.)
as the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the
Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response
from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant
1. Respondent’s <eds.biz> domain name is identical to Complainant’s registered EDS mark.
2. Respondent has no rights or legitimate
interests in the <eds.biz>
domain name.
3. Respondent registered the <eds.biz> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns numerous registrations
for its EDS mark registered with the U.S. Patent and Trademark Office
(“USPTO”). More specifically,
Complainant owns Reg. Nos. 952,895 registered
February 6, 1973 and 2,047,497 registered March 25, 2997, among others.
Additionally,
Complainant owns trademark rights for the EDS mark in virtually
every jurisdiction in the world that recognizes such rights and grants
the
ability to register marks, including, but not limited to: Argentina; Australia;
Austria; Bahrain; Benelux; Ireland; Israel; Italy;
Taiwan; Trinidad and the
United Kingdom, among others.
Complainant was founded in 1962 as
Electronic Data Systems and has been using the EDS mark as its abbreviation
since as early as 1964.
Complainant supports more than 2.2 million desktops
worldwide, manages about 46,000 servers and provides web hosting for about 750
international clients. Complainant’s worldwide revenues approached $21.5
billion dollars in 2001 alone. Complainant has spent over
$500 million dollars
on advertising and promoting its name and EDS mark internationally since its
inception. Complainant also operates
from the following URLs: <eds.com>,
<my-eds.com>, <eds.de>, <eds.fr> and
<edsatlanticchallenge.com>.
Respondent registered the disputed domain
name March 27, 2002 and has yet to develop a purpose or website in conjunction
with the
<eds.biz> domain
name.
Paragraph 15(a) of the STOP 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 STOP Rules
and draw such inferences it considers appropriate
pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name
is identical to a trademark or service mark in which the Complainant has rights;
and
(2) the Respondent has
no rights or legitimate interests in respect of the domain name; and
(3)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (“gTLD”) in the
disputed domain name is not a factor for purposes of determining
that a
disputed domain name is not identical to the mark in which the Complainant
asserts rights.
Complainant
has established its rights in the EDS mark through international registration
and continuous use of the mark since as
early as 1964.
Respondent’s
<eds.biz> domain name is
identical to Complainant’s registered EDS mark in spelling and form, and
incorporates Complainant’s entire mark in
its second level domain. Respondent’s
addition of the gTLD “.biz” is insignificant to the “identical” inquiry
conducted under STOP
Policy ¶ 4(a)(i). See
Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc. FA 102811
(Nat. Arb. Forum Feb. 8, 2001) (finding that the <.biz> gTLD in the
disputed domain name is not a factor and hence
to be ignored, in determining
whether a disputed domain name is identical to the mark in which Complainant
asserts rights).
Accordingly,
the Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a
Response in this proceeding. Therefore, it is presumed that Respondent lacks
rights and legitimate
interests in the <eds.biz>
domain name. See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that Respondents’ failure to respond can be construed as an admission that they
have no
legitimate interest in the domain names). Furthermore, because
Respondent failed to submit a Response refuting Complainant’s allegations,
the
Panel is permitted to make all reasonable inferences in favor of Complainant. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all allegations
of the Complaint”).
It is not apparent to the Panel that
Respondent has rights or legitimate interests in the <eds.biz> domain name. In fact, Complainant’s famous mark and
unanswered allegations contained in its Complaint create a presumption against
Respondent being the owner of a trade or service mark that is identical to the
disputed domain name. Respondent has not come forward
with any evidence that it
has rights or legitimate interests in the EDS mark anywhere in the world.
Therefore, Respondent has failed
to establish rights in the domain name
pursuant to the threshold established by STOP Policy ¶ 4(c)(i). See Nat’l
Acad. Of Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb.
Forum Feb. 11, 2002) (finding that, because Respondent did not come forward
with a Response, the Panel could
infer that it had no trademark or service
marks identical to <grammy.biz> and therefore had no rights or legitimate
interests
in the domain name); see also
Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no
rights or legitimate interests where one “would be hard pressed to find a
person who
may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark).
Respondent has yet to develop a website
or designate a purpose in conjunction with its <eds.biz> domain name. The burden of proof lies with
Respondent in producing reliable and credible evidence that the disputed domain
name was
registered for a legitimate purpose. Respondent’s failure to support
its registration of the infringing domain name by showing it
has made
demonstrable preparations to use <eds.biz>
in connection with a bona fide offering of goods or services implies that
Respondent has no such rights or legitimate interests under
STOP Policy ¶
4(c)(ii). See Gene Logic Inc. v. Bock,
FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that in order to show rights
or legitimate interests in the disputed domain name
Respondent must establish
with valid evidence “a course of business under the name, or at least
significant preparation for use of
the name prior to learning of the
possibility of a conflict” with an IP Claimant); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10,
2000) (finding that absent evidence of preparation to use the domain name for a
legitimate purpose, the
burden of proof lies with the Respondent to demonstrate
that it has rights or legitimate interests).
There is no evidence or information
before this Panel that suggests Respondent is known as “EDS” or by its <eds.biz> domain name pursuant to
STOP Policy ¶ 4(c)(iii). Because Respondent registered such a famous and
established mark as its domain name,
there is a presumption that Respondent is
not commonly known by the <eds.biz>
domain name. See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by
the
disputed domain name or using the domain name in connection with a legitimate
or fair use); see also Nat’l Acad. Of
Recording Arts & Sci Inc. v. Lsites, FA 103059 (Nat. Arb. Forum Feb.
11, 2002) (finding that the famous nature of Complainant’s GRAMMY mark
prevented Respondent from
being commonly known by <grammy.biz>).
Accordingly, the Panel finds that STOP
Policy ¶ 4(a)(ii) has been satisfied.
It has been widely held by previous
Panels that evidence of bad faith includes actual or constructive knowledge of
a commonly known
mark at the time of registration. Due to the nature of
NeuLevel’s STOP registration procedure, Complainant’s listing on the Principal
Register of the USPTO and the fact that Respondent is situated only eighteen
miles from Complainant’s corporate headquarters, Respondent
is thought to have
had notice of Complainant’s rights in the EDS mark. Respondent’s registration
of the disputed domain name, despite
knowledge of Complainant’s preexisting
rights in the mark, represents bad faith registration under STOP Policy ¶
4(a)(iii). See Valspar
Sourcing, Inc. v. TIGRE, FA 112596 (Nat.
Arb. Forum June 4, 2002) (“Respondent was on notice of Complainant’s rights in
PAINT.BIZ when it registered the
disputed domain name, because Respondent
received notice of Complainant’s IP Claim.
Respondent’s registration of the disputed domain name despite this
notice when Respondent had no right or legitimate interest in the
domain name
is evidence of bad faith”); see also
Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161
F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register
registration [of a trademark or service mark] is constructive
notice of a claim
of ownership so as to eliminate any defense of good faith adoption” pursuant to
15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or
constructive knowledge of commonly known mark
at the time of registration).
Additionally, Respondent’s registration
of a domain name that incorporates Complainant’s entire EDS mark will
eventually lead to user
confusion. Complainant has used the EDS mark for at
least the past thirty years internationally and operates from numerous websites
utilizing the EDS mark. A percentage of Complainant’s interested Internet consumers
will assuredly be directed to Respondent’s website.
Respondent has failed to
establish rights or legitimate interests in the <eds.biz> domain name, which implies Respondent had
opportunistic motives in registering Complainant’s established mark in its
domain name.
Respondent’s actions evidence bad faith under STOP Policy ¶
4(b)(iv). See Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously
connected with Complainant and its products that the use
of the domain names by
Respondent, who has no connection with Complainant, suggests opportunistic bad
faith); see also Phat Fashions v. Kruger,
FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶
4(b)(iv) even though Respondent has not used the domain
name because “It makes
no sense whatever to wait until it actually ‘uses’ the name, when inevitably,
when there is such use, it will
create the confusion described in the Policy”).
The Panel finds that STOP Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under the STOP Policy, the Panel
concludes that relief should be hereby GRANTED.
Accordingly,
it is Ordered that the <eds.biz> domain
name be TRANSFERRED from Respondent
to Complainant, and that subsequent challenges under the STOP Policy against
this domain name SHALL NOT be
permitted.
Judge Harold Kalina (Ret.), Panelist
Dated: July 18, 2002
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