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Generic Top Level Domain Name (gTLD) Decisions |
Claim Number: FA0203000105863
Complainant is Cisco Technology, Inc., San Jose, CA (“Complainant”) represented
by Leslie C. McKnew, Esquire of Brobeck, Phleger & Harrison, LLP. Respondent is Dmitri Snytkine a/k/a ExamNotes.Net, East Strousburg, PA
(“Respondent”) represented by Thomas F.
Ford, Esquire of Smith, Ford, &
Associates, P.C.
The domain name at issue is <ciscorouter.info>, registered
with NamesDirect.com, Inc.
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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) electronically on March 13, 2002; the
Forum received
a hard copy of the Complaint on March 15, 2002.
On March 15, 2002, NamesDirect.com, Inc.
confirmed by e-mail to the Forum that the domain name <ciscorouter.info> is registered with NamesDirect.com, Inc.
and that the Respondent is the current registrant of the name. NamesDirect.com, Inc. has verified that
Respondent is bound by the NamesDirect.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 March 18, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of April 8, 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@ciscorouter.info
by e-mail.
A timely Response was received and
determined to be complete on April 8, 2002.
A timely Additional Submission was
received from Complainant on April 15, 2002.
A timely Additional Submission was
received from Respondent on April 17, 2002.
On April 17, 2002,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
A. Complainant
Complainant Cisco Technology, Inc. claims
that it owns well-established rights to the famous mark and name CISCO in the
United States
and in many other countries in connection with a vide variety
goods and services, such as, networking hardware and software including,
but
not limited to, routers. Complainant
claims to own the following U.S. Trademark Registrations for CISCO:
MARK U.S.P.T.O.REGISTRATION
NO. DATE OF REGISTRATION
CISCO 1,542,339 6/6/89
CISCO 2,314,702 2/1/00
CISCO 2,498,746 10/16/01
Complainant also contends that it owns
U.S. Registered Trademarks for CISCO SYSTEMS, CERTIFIED INTERNET EXPERT, CISCO
IOS, CISCO PRESS,
CISCO SYSTEMS PRESS and CISCO SYSTEMS CAPITAL.
Complainant also contends that it has
numerous pending Applications for Trademarks in the United States Patent and
Trademark Office
for CISCO, CISCO NETWORKS, CISCO POWER NETWORK, CISCO SYSTEMS
VERIFY and CISCO SYSTEMS.
Complainant also contends that it owns
numerous Trademarks Registrations for CISCO and CISCO-related marks in other
countries, such
as Australia, Benelux, Canada, Chile, China, Columbia, Costa
Rica, The Czech Republic, The European Community, Germany, Hong Kong,
Israel,
Italy, Japan, South Korea, Malaysia, Mexico, New Zealand, Panama, Peru,
Philippines, Poland, Romania, Russia, Saudi Arabia,
Switzerland, Turkey, The
United Kingdom and Vietnam among others.
Complainant also contends that it owns
and uses a number of Internet domain names including <cisco.com>,
<cisco.info.>,
<ciscorouters.info> and <ciscosystems.com>
among many others.
Complainant’s Trademark Registrations
indicate that it claims its first use of CISCO as a mark in commerce was on
December 27, 1984.
Complainant contends that in the over 17
year period of continuous use, it has sold and promoted extensively its
products and services
throughout the world under its CISCO marks and it is
recognized worldwide as a premier provider of networking solutions. Complainant contends that due to its
longstanding and extensive use of its family of CISCO marks and names, that it
owns the exclusive
rights to use the mark CISCO in the computer and technology
fields.
Complainant contends that the domain name
in question, <ciscorouter.info> is confusingly similar to CISCO’s
family of well-known and distinctive marks for it begins with the identical
CISCO wording of
CISCO’s famous CISCO marks and ends with generic term “router”
which is simply a networking product that CISCO designs, manufactures
and sells
throughout the world utilizing the CISCO mark.
Complainant contends that Respondent has
no rights or legitimate interests in the <ciscorouter.info> domain
name because (1) there is no evidence that Respondent offers or has expressed
any good faith intention of offering any
CISCO router products (2) there is no
indication that Respondent has done or intends to do business under the
designation “CISCOROUTER”
(3) there is no indication on Respondent’s Website
that Respondent is doing business as “CISCOROUTER” or that Respondent intends
to legitimately offer any CISCO products under that designation (4) Respondent
is not in the business of selling any CISCO router
products, but is merely in
the business of providing information regarding certification exams, including
among other things, CISCO’s
networking certification program (5) Respondent’s
use will infringe upon CISCO’s trademark rights (6) Respondent fraudulently
claims
to own a U.S. Trademark Registration for the mark CISCOROUTER (Reg. No.
E.G.B. 12345) (7) Respondent has previously been put on notice
by CISCO that it
has infringed and illegally used CISCO marks on its website and in metatags for
its Website; (8) past communications
with Respondent indicate that it lacks and
can have no rights or legitimate interests in the subject domain name.
Complainant contends that Respondent
registered the domain name in bad faith in that intends to use it to attract
for commercial gain
Internet users to its website by creating a likelihood of
confusion with CISCO and its famous marks as to the source, sponsorship,
affiliation or endorsement of Respondent.
Complainant contends that Respondent is well aware of CISCO’s exclusive
rights in the CISCO marks, that Respondent has a history of
infringing on
CISCO’s trademark and intellectual property rights, that Respondent provided
fraudulent information in connection with
the registration of this domain name
indicating that it owns a federal trademark for CISCO Router when it does not.
B. Respondent
Respondent contends that Complainant has
offered no proof of any actual confusion between its marks and Respondent’s
domain name. Respondent acknowledges that
Complainant has rights in and to the mark CISCO, but claims that Complainant
does not have any rights
in the name or mark CISCO ROUTER. Respondent further contends that term CISCO
and ROUTER are used within thousands of other domain names not owned by
Complainant. Respondent contends that
Internet users are familiar enough with the difference between the various
domain names to not be confused.
Respondent contends that through its
<examnotes.net> site it sells dozens of practice technical certification
exams including
those relating to Complainant’s CISCO certification
examinations. That site is also
designed to provide free information in a variety of other non-commercial
resources such as discussions forums and
other services to Internet users interested
in the products, services and certifications offered by Complainant and many
others. Respondent claims it does not
sell or resell any of Complainant’s products.
Respondent contends that it registered
the domain name in question with the intention of providing similar non-commercial
information or resources to Internet users who have or may be considering
purchasing the Complainant’s product.
Respondent contends that its only intention in registering the domain
name was to create a non-commercial resource for information regarding
certain products offered to consumers by Complainant.
Respondent contends that its site was in
development prior to this dispute and that it carries on each page the
prominent disclaimer
disassociating itself from Complainant. Respondent thus claims that there can be no
confusion between this domain site and any of Complainant’s marks.
Respondent contends Complainant’s
arguments regarding trademark infringement are misplaced and should be ignored
since the ICANN Rules
and Policies are not intended to adjudicate Lanham Act
claims. Respondent further contends
that Complainant has submitted no evidentiary or factual support for the
assertions it makes regarding
Respondent’s alleged lack of rights or legitimate
interests in the domain name.
Respondent contends that it made demonstrable preparations for the use
of the domain name in a non-commercial setting. Respondent contends that it registered the domain name on
September 13, 2001 and the first pages were published on the Internet around
March 19, 2002. Respondent contends
that it has never infringed the intellectual property rights of Complainant in
the past as alleged. Respondent contends
that there is no argument or factual submission that Respondent has registered
or has acquired the domain name
primarily for the purpose of selling, renting
or otherwise transferring the domain name registration to the Complainant at
any price
or at any time. Respondent
further contends that there is no argument or factual presentation that
Respondent has registered the domain name in order
to prevent the Complainant
from reflecting the mark in a corresponding domain name nor has there been any
evidence or argument that
Respondent has engaged in a pattern of registering
domain names for such purposes.
Respondent further contends that
Complainant and Respondent are not competitors and therefore there can be no
contention that Respondent
registered the domain name for the purpose of
disrupting business of a competitor.
Respondent
contends that its site is non-commercial and contains a disclaimer “expressly
approved by counsel for the Complainant.”
Therefore, there can be no argument or evidence that Respondent has
intentionally attempted to attract, for commercial gain, Internet
users to
respond to its website or other online location, by creating a likelihood of
confusion with Complainant’s marks as to the
source, sponsorship, affiliation
or endorsement of Respondent’s Website.
Respondent contends that Complainant has
engaged in reverse domain-hijacking by engaging in repeated, unsubstantiated
challenges to
Respondent’s registration <cicscorouter.info>
without any basis therefore.
C. Additional Submission – Complainant
Complainant
contends that it need not submit proof of actual confusion for the Panel to
find that the domain name is confusingly similar
to one or more of its marks.
Complainant contends that Respondent did
not begin using the domain name in question until after CISCO filed and
served the Complaint in these proceedings.
As such, there could have been no actual confusion or evidence thereof
to proffer. Complainant contends that
the fact that other people also might be utilizing CISCO and/or Router or other
variations thereof and also
trying to trade on the good will and reputation of
CISCO does not constitute a defense.
Complainant contends that it clearly actively protects its
trademarks. Complainant contends that
the law is clear that the addition of a generic term such as “router” to a
famous trademark such as CISCO
does not distinguish the domain name in any
meaningful way from the mark.
Complainant contends that the disclaimer itself is evidence of the fact
that the domain name is confusingly similar to its marks and
it only appears
once in the beginning of the Respondent’s Website and not on the following web
pages.
Complainant contends that Respondent
utilizes CISCO’s famous marks in its metatags for its website located at <ciscorouter.info.> Complainant contends that Respondent is in
fact a competitor of CISCO for training materials and that the domain name was
registered
with the intent to use it to promote the products and services of
companies other than CISCO as well which will likely include Respondent
and
CISCO’s other competitors. Complainant
contends that Respondent merely copied some materials from other websites and
put it on its website after it received the Complaint and such is an
example of bad faith.
Complainant contends that Respondent’s
claim for reverse domain-name hijacking is without merit since Complainant
clearly owns numerous
CISCO and CISCO-related marks and enforces them in
accordance with the law.
D. Additional Submission – Respondent
Respondent claims that his disclaimer
does in fact appear on the top and center of each and every page published at
<ciscorouter.info>.
Respondent contends that Complainant has failed to produce any evidence
refuting Respondent’s contention that before any notice to
Respondent of
dispute, Respondent used or made demonstrable preparations to use, the domain
name in connection with a bona fide offering of goods or services
or that the Respondent is making legitimate non-commercial or fair use of the
domain name without intent
for commercial gain to misleadingly divert consumers
or to tarnish the trademark or service mark at issue.
Respondent
contends that it had intended from the beginning to utilize the <.info>
domain name to provide information in a non-commercial
setting and to serve as
resource for users and potential users of the Complainant’s router
products. Respondent contends that it
has made use of the domain name for this purpose and intends to further expand
the site to incorporate
discussion forums and other non-commercial and neutral
sources of information, commentary and opinion regarding the Complainant’s
router products.
Respondent contends that Complainant has
failed to produce any evidence whatsoever of the bad faith use and registration
of the domain
name.
(1) Complainant
has met its burden to prove by a preponderance of the admissible, credible,
relevant evidence that Respondent’s domain
name is confusingly similar to
trademarks in which Complainant has rights.
(2) Complainant
has not met its burden to prove by a preponderance of the admissible,
credible, relevant evidence that Respondent has no rights or legitimate
interests in respect to the domain name.
(3) Complainant
has not met its burden to prove by a preponderance of the admissible,
credible, relevant evidence that Respondent’s domain name has been
registered and
is being used in bad faith.
(4) Complainant’s
Complaint was filed in good faith and there has been no reverse domain name
hijacking.
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.
Identical and/or Confusingly Similar
Respondent does not dispute that Complainant
owns numerous valid, live Trademark Registrations for CISCO and that CISCO
manufactures
and sells routers to which are affixed said trademark. The first portion of the domain name in
question is identical to the Registered marks of Complainant-CISCO. However, the domain name adds the word
“ROUTER”. ROUTER is a generic term for
a particular type of computing device.
Indeed, Complainant manufacturers and sells such devices utilizing the
trademark CISCO. Thus, the domain name
in question is much like a domain name such as <McDonald’shamburgers>,
being the famous name and mark
of the manufacturer and the type of good sold
under the mark.
U.D.R.P. 4(a)(i) only requires that
Complainant prove by a preponderance of the admissible, relevant evidence that
Respondent’s domain
name is identical or confusingly similar to a trademark or
service mark in which Complainant has rights.
There is no requirement that Complainant produce any evidence of actual
confusion between its mark and Respondent’s domain name nor
that Complainant
prove same. Since the domain name and
the marks at issue here are not identical, the issue is simply whether they are
“confusingly similar.” Since the
addition to the mark is precisely the type of product made by the company which
owns the mark, there can be little doubt
that these marks are confusingly
similar. In fact, the selection of this
particular word to add to the CISCO mark was no doubt made precisely for the
reason that anyone seeing
<ciscorouter.info> would immediately
associate that full name with the CISCO mark and thus Complainant. This is no doubt why Complainant owns and
uses the similar domain name <ciscorouters.info>. If the domain name in question were
something more akin to <ciscohamburgers.com>, there would be a serious
question as to whether
the two were confusingly similar. Such is not the case here.
Respondent’s use of a disclaimer, even if
it does appear on each and every page of its website, is insufficient to dispel
the confusion. The mark and domain name
in question are confusingly similar on their face. Such confusing similarity exists no matter to what type of site
the Internet surfer is directed when selecting the domain name. The initial interest confusion caused by the
similarity between the mark and domain name is not dispelled or remedied by the
disclaimer
in question. By the time an
Internet surfer has selected <ciscorouter.info> and is then
directed to the website, he or she has already been confused. Thus, the owner of the mark is harmed as may
be the Internet surfer. The effect of
the disclaimer, if it is effective at all, may be to redirect the surfer
elsewhere but not necessarily even to the legitimate
authorized CISCO site(s).
Complainant has thus met its burden to
prove by a preponderance of the admissible, credible, relevant evidence that
Respondent’s domain
name is confusingly similar to a trademark in which it has
rights.
Rights or Legitimate Interests
Respondent argues that it has rights and legitimate
interests in respect to the domain name by virtue of it meeting the
requirements
of UDRP 4(c)(i) and/or (iii).
Respondent contends that it made
demonstrable preparations to use the domain name in connection with a bona
fide offering of goods or services before it received any notice of this
dispute. However, Respondent presents
no evidence whatsoever to support this contention and this Arbitrator cannot
find, based on this Record,
that such “demonstrable preparations” were made. The claim by a Respondent alone is insufficient
to constitute evidence of “demonstrable preparations.” Thus, UDRP 4(c)(i) is of no help to
Respondent.
However, Respondent may be making an
arguably, legitimate, non-commercial or fair use of the domain name without
intent for commercial
gain to misleadingly divert customers or tarnish the
trademark or service mark at issue.
UDRP 4(c)(iii).
There is no doubt that even though the
site to which the domain name leads a surfer appears to be non-commercial, that
Respondent
is in fact a competitor of Complainant in certain respects and does
operate another website on which it sells products and/or services
which
compete with some of Complainant’s. In
addition, that site appears to provide information and/or products of other
competitors of Complainant.
The site to which the domain name in
question directs a surfer at the present time does not appear to include links
to any other sites,
including the “commercial” one of Respondent nor is there
any information about Respondent’s other commercial site on it. Complainant
has
presented no evidence to indicate that Respondent is in fact making direct or
indirect commercial use of this site.
However, it is well known in the industry
that the information that one can gather by way of a so called “non-commercial”
site by
the use of cookies and other devices, can be extremely valuable. In addition, common sense tells this
Arbitrator that any visitor to <ciscorouter.info> who visited said
site for the purposes for which Respondent contends it has established the
site, might be interested in the
products and services of Respondent offered at
its commercial site and might be directed to Respondent’s commercial site. Because this Record includes no direct
evidence of any obvious connection between the sites, other than common
ownership, this Arbitrator
cannot find that Respondent does not meet the
requirements of UDRP 4(c)(iii).
However, this Arbitrator has to observe that the Record in this regard
is unclear and it “smells funny.” If
the “odor” grows at some point, Complainant might be moved to re-file a
Complaint based on new evidence.
Based upon this Record, this Arbitrator finds that
Respondent is making a legitimate, non-commercial or fair use of the domain
name,
without intent for commercial gain to misleadingly divert customers or to
tarnish the trademark or service mark at issue UDRP 4(c)(iii). Thus, Respondent appears to have legitimate
interests in respect of the domain name.
Registration and Use in Bad Faith
For the reasons stated above, this Arbitrator does not
believe that Complainant has met its burden to prove that Respondent’s domain
name has been registered and is being used in bad faith. However, as with the requirements of UDRP
4(a)(ii), there may come a time when there is sufficient evidence to support a
claim of
bad faith registration/use by Complainant and Complainant is well
advised to monitor the activities of Respondent in this regard.
Complainant’s Complaint is
hereby dismissed and the relief requested is denied.
M. KELLY TILLERY, ESQUIRE, PANELIST
Philadelphia, PA
Dated:
April 26, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/622.html