REVISED DECISION

Getronics Nederland B.V. v. MIC a/k/a Syed Hussain

Claim Number: FA0207000114752

PARTIES

Complainant is Getronics Nederland B.V., Amsterdam, NETHERLANDS (“Complainant”) represented by Michael J. Bevilacqua, of Hale and Dorr LLP.  Respondent is MIC a/k/a Syed Hussain, Closter, NJ, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <getronicsdecan.com>, registered with Bulkregister.com, Inc.

PANEL

On August 8, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 1, 2002; the Forum received a hard copy of the Complaint on July 1, 2002.

On July 1, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <getronicsdecan.com> is registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the name.  Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, Inc. 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 July 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 2002 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@getronicsdecan.com by e-mail.

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.

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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Respondent’s <getronicsdecan.com> domain name is confusingly similar to Complainant’s registered GETRONICS and DECAN marks.

2. Respondent does not have any rights or legitimate interests in the <getronicsdecan.com> domain name.

3. Respondent registered and uses the <getronicsdecan.com> domain name in bad faith.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant is the owner of several worldwide trademark and service mark registrations for the GETRONICS mark. In addition, Complainant acquired French company Decan S.A. on March 15, 2001, and is the owner of several registrations incorporating its name, DECAN.

MARK	COUNTRY	SERIAL/REG. NO.	FILING/REG. DATE	GOODS OR SERVICES
GETRONICS	Canada	1025203	8.10.99	Computers, computer peripherals, namely, printers, routers, patch boxes, hubs, modems, servers, computer terminals, inter alia. Professional business consultancy, professional financial consultancy, maintenance and repair of computers, computer peripherals, etc.
GETRONICS	United Kingdom	1400473	7.12.91	Paper tapes, cards, all for or bearing data, and all for use with electrical or electronic apparatus and instruments; office machinery.
GETRONICS	International Register	718563	7.15.99	Professional business consultancy; consultancy in the field of business management, business economy and business administration, etc.
GETRONICS	United States	75/772220	8.10.99	Telecommunications and data communications services, namely, personal communication; rental of telecommunication and data communication equipment.
DECAN	European Community	1021583	1.21.99	Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments, etc.
DECAN	France	52812294	7.4.94	Advertising; commercial business management; commercial administration; office work, computer programming and magnetic recording carriers.

Complainant is one of the world’s leading providers of Information and Communication Technology (ICT) solutions and services to professional users of ICT. Complainant employs over 30,000 employees and maintains a direct presence in over thirty-five countries. Complainant is headquartered in Amsterdam, with regional head offices in Boston, Singapore and Washington, DC.

Complainant has used its GETRONICS mark continuously since 1980. On March 15, 2001, Complainant released a worldwide statement announcing that it had acquired the French company, Decan. The records of BulkRegister.com indicate that Respondent registered the domain name <getronicsdecan.com> on March 16, 2001, one day after Complainant’s worldwide announcement.

Complainant’s GETRONICS and DECAN products and services are marketed around the world exclusively under Complainant’s registered trademarks, and are available solely from Getronics, Decan and its suppliers. Complainant’s marks are universally recognized and relied upon as identifying Complainant as the sole source of its products and services, and distinguish Complainant’s products from its competitors. As a result of the aforementioned circumstances, the GETRONICS and DECAN marks have acquired substantial goodwill and are valuable commercial assets.

As stated, Respondent registered the <getronicsdecan.com> domain name on March 16, 2001. Respondent has not developed a purpose or a corresponding website in conjunction with its registration of the disputed domain name. On July 31, 2001, Complainant’s authorized representative sent a letter to Respondent requesting that Respondent discontinue all plans to use the domain name and to transfer the domain name to Complainant. In response to Complainant’s cease and desist request, Respondent telephoned Complainant’s representative and offered to sell the domain name registration, and implied that the requested figure would be in excess of out-of-pocket expenses.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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

Complainant has sufficiently demonstrated its rights in the GETRONICS mark through registration with various international authorities and subsequent continuous use of the mark in commerce. Complainant has also established rights in the DECAN mark via its acquisition of the French Company that previously held rights in the mark, and through subsequent continuous use of the mark since acquiring rights on March 15, 2001.

Respondent’s <getronicsdecan.com> domain name is confusingly similar to Complainant’s GETRONICS and DECAN marks. Respondent’s combination of Complainant’s marks fails to create a distinct and separate mark because Internet users identify both marks as affiliated with Complainant; thus, Respondent’s domain name is rendered confusingly similar. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).

Furthermore, the addition of the generic top-level domain “.com” is required in domain name registrations, and is not sufficient in distinguishing a domain name from the mark reflected in the second-level domain. Respondent’s second-level domain remains the primary object of scrutiny under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a formal Response in this proceeding, and Complainant’s allegations have gone unrefuted and uncontested. Therefore, the Panel is permitted to make all reasonable inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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”).

Additionally, when Respondent fails to submit a Response and its rights and interests are not apparent to the Panel, it is presumed that Respondent lacks rights and legitimate interests in the domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Complainant’s Submission provides uncontested circumstances that indicate Respondent attempted to transfer or sell its interest in the domain name to Complainant’s representative. Respondent’s willingness to transfer title of the subject domain name evidences its lack of rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

Respondent has held the registration of the domain name since March 16, 2001, over sixteen months. Respondent has yet to develop a stated purpose or produce evidence suggesting it has made preparations to use the website in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Respondent’s lack of use, taken in conjunction with its attempted sale of the domain name registration, suggests that Respondent registered the domain name primarily to profit from its sale, which does not constitute a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See  Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

There is no evidence suggesting a connection between Respondent and its <getronicsdecan.com> domain name. Respondent is not an authorized representative of Complainant, nor is it licensed to use Complainant’s GETRONICS or DECAN marks in a domain name. Because Complainant’s mark has been registered in numerous jurisdictions, represents a unique term and has established secondary meaning in the ICT solutions industry, it is presumed that Respondent is not commonly known by the <getronicsdecan.com> domain name pursuant to Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel determines that Respondent does not have any rights or legitimate interests in the <getronicsdecan.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is seeking to capitalize on the notoriety of Complainant’s GETRONICS and DECAN trademarks by strategically registering a combination of Complainant’s marks the day after Complainant’s acquisition of Decan was announced. Complainant has provided unrefuted evidence of circumstances that indicate Respondent registered the domain name primarily for the purpose of selling or transferring the domain name registration to Complainant. Respondent’s motivations to sell its rights in the domain name evidence bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA 94790 (Nat. Arb. Forum May 25, 2000) (finding bad faith where the Respondent purchased the domain names on the date of the Complainant’s press release regarding a merger and business expansion).

Respondent has passively held the domain name for over sixteen months. When considering the totality of circumstances surrounding Respondent’s registration of the infringing domain name, it is evident that Respondent has passively held the domain name in anticipation of selling its rights in the registration to Complainant without incurring the costs associated with development of the website. Respondent’s actions represent bad faith registration and use under Policy ¶ 4(a)(iii). See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

Accordingly, Respondent’s passive holding and attempted sale of the domain name registration fulfills Policy ¶ 4(a)(iii)’s bad faith requirement.  

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <getronicsdecan.com> domain name be TRANSFERRED from Respondent to Complainant.

James P. Buchele, Panelist

Dated:  August 20, 2002

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