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Generic Top Level Domain Name (gTLD) Decisions |
Computer Sciences Corporation v.
Corporate Domains Inc.
Claim Number: FA0204000110841
PARTIES
Complainant
is Computer Sciences Corporation, El
Segundo, CA (“Complainant”) represented by Kenneth
J. Purcell. Respondent is Corporate Domains Inc., Wilmington, DE
(“Respondent”) represented by Merton E.
Thompson, of Fish & Richardson,
P.C.
The
domain name at issue is <csc.biz>,
registered with Corporate Domains, 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.
David
E. Sorkin 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, Inc. 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 April 25, 2002; the Forum
received a hard copy of the Complaint on
April 26, 2002.
On
April 30, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 20,
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”).
A
timely Response was received and determined to be complete on May 20, 2002.
On June 20, 2002, pursuant to STOP Rule 6(b), the Forum
appointed David E. Sorkin as
the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant
owns longstanding rights in the trademark CSC, including multiple trademark
registrations in the United States (on the
PTO’s Principal Register) and
abroad. Complainant and its mark are
well known worldwide.
In
2001 Complainant was among two or more entities that applied to register <csc.biz> during the startup
period for the newly introduced “.biz” top-level domain. In response to litigation challenging the
legality of its startup procedure, NeuLevel rejected all applications submitted
for <csc.biz> and thousands of
other domain names for which multiple applications had been submitted, and
announced that a new round of applications
for these domain names would be
conducted in March 2002. Respondent was
among those who applied to register <csc.biz>
during this second application period, but Complainant did not become aware of
the second round until after it had taken place.
Complainant
alleges that the domain name <csc.biz>
is identical to its CSC mark (but for the addition of the “.biz” extension);
that so far as is known to Complainant, Respondent possesses
no trademark
rights in the mark and has no legitimate interest in respect of the disputed
domain name; and that Respondent registered
the disputed domain name in bad
faith in order to prevent Complainant from reflecting its mark CSC in a
corresponding domain name,
and for the purpose of intentionally attempting to
attract, for commercial gain, Internet users to Respondent’s web site by
creating
a likelihood of confusion with Complainant’s mark.
Complainant
notes that Respondent is both the registrant and the registrar for the disputed
domain name, and contends that Respondent
has abused its authority and taken
unfair advantage of its position as a NeuLevel-accredited registrar to register
the disputed domain
name for its own benefit with actual or implied knowledge
of Complainant’s IP claim.
Complainant
requests that the Panel order that the disputed domain name be transferred from
Respondent to Complainant.
B. Respondent
Respondent
is a wholly-owned subsidiary of Corporation Service Company, which owns rights
in and has used the CSC mark for many decades.
Corporation Service Company owns a Delaware state registration for the
trademark CSC and Design, has applied to register the CSC and
Design mark with
the USPTO, and holds a federal trademark registration for CSC INCSPOT &
Design.
Respondent
contends that it has rights in respect of the disputed domain name by virtue of
its parent firm’s name and trademark rights,
and that it did not register the
disputed domain name in bad faith.
Respondent notes that there are numerous entities that use CSC as a
trademark or trade name, and contends that Complainant and Respondent
are
merely two among many such entities with legitimate interests in the domain
name, each of which had an equal opportunity to attempt
to register the name
when it became available.
Respondent
further contends that Complainant has brought this proceeding in bad faith, in
that it was aware of Respondent’s identity
and rights in the domain name before
it filed the Complaint, and requests that the Panel find that Complainant has
engaged in Reverse
Domain Name Hijacking.
The Panel finds as follows:
(1)
The
disputed domain name is identical to a mark in which Complainant has rights.
(2)
Respondent
has rights or legitimate interests in respect of the disputed domain name.
(3)
In light of
the Panel’s finding on rights or legitimate interests, which is dispositive of
the present matter, the Panel declines
to enter a finding as to bad faith
registration or use.
(4)
The Panel
declines to enter a finding of Reverse Domain Name Hijacking.
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.”
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.
Complainant
has demonstrated that it owns rights in the CSC mark, and for purposes of the
STOP Policy, the disputed domain name <csc.biz>
is deemed identical to that mark.
Respondent
has demonstrated that its parent firm, Corporation Service Company, also owns
rights in the CSC mark. But Respondent
for some reason chose to register the disputed domain name in its own name
rather than in the name of its parent firm,
and it is not clear that Respondent
standing on its own possesses any rights in respect of the disputed domain
name. It is instructive that at least
some other domain names owned or used by the parent firm are registered in its
name rather than in
Respondent’s name, unlike the disputed domain name in this
proceeding. (See WHOIS records for
<incspot.com>, <cscinfo.com>,
<corporationservicecompany.com>, <csc.info>, and
<cscinfo.biz>.) But Respondent is
a wholly-owned subsidiary of the parent firm, does business under the parent’s
name, and shares the parent’s physical
address. Under these circumstances, the Panel has little cause to doubt
that Respondent registered the disputed domain name on behalf of its
parent
firm. See generally Seagate Tech.
LLC v. TC Services, FA102782 (Nat. Arb. Forum Feb. 7, 2002) (discussing
assertion of rights by domain name registrant on behalf of third party). The Panel therefore finds that Respondent
has rights or legitimate interests in respect of the disputed domain name.
The Panel’s finding as to rights or
legitimate interests is dispositive, rendering the question of bad faith
registration or use largely
academic, and the Panel therefore declines to enter
a formal finding on this question.
However, Complainant’s claim that Respondent registered the disputed
domain name in bad faith by taking unfair advantage of its role
as a registrar
merits further discussion. This
contention does not fall within any of the particular bad faith circumstances
set forth in paragraph 4(b)(ii) of the STOP Policy
(none of which appear to be
present in this case), but those circumstances are merely exemplary, not
exhaustive. Yet the record before
this Panel furnishes no evidence whatsoever
that Respondent acted improperly in registering the disputed domain name, aside
from
the bare assertion that Respondent took “unfair and unconscionable
advantage of its access and facilities as an authorized registrant.” Complainant does not allege, for example,
that Respondent gave itself preferential treatment over other applicants
seeking to use
its services as a registrar, nor that it structured its
application queue to give it an advantage over other competing registrars,[1]
nor that it violated any rules or policies promulgated by NeuLevel or
ICANN. While a higher level of scrutiny
may well be appropriate in light of Respondent’s dual role as registrant and
registrar, there is
insufficient evidence in the present record to support any
inference of bad faith.
It
strains credulity to believe that Complainant was unaware of Respondent’s parent
firm’s coexisting rights in the CSC mark.
Had the disputed domain name been registered in the name of the parent
firm rather than that of Respondent, a finding of Reverse Domain
Name Hijacking
would likely be warranted. In the
present circumstances, however, Complainant’s argument on the rights or
legitimate interests question is sufficiently plausible
that such a finding
seems inappropriate. The Panel declines
to enter a finding of Reverse Domain Name Hijacking.
DECISION
The Panel finds that Respondent has
rights or legitimate interests in respect of the domain name <csc.biz>. The Complaint is dismissed, and
subsequent challenges to Respondent’s registration of <csc.biz> under the STOP Policy shall not be
permitted.
David E. Sorkin, Panelist
Dated: June 21, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/923.html