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Generic Top Level Domain Name (gTLD) Decisions |
Gavagai Technology Incorporated v.
Gavagai
Claim Number: FA0212000135611
PARTIES
Complainant
is Gavagai Technology Incorporated,
Burnaby, BC, CANADA ("Complainant") represented by Paul Armitage, of Frasken Martineau
DuMoulin LLP. Respondent is Gavagai, Upper Marlboro, MD, USA
("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <gavagai.com>,
registered with Network Solutions, Inc.
PANEL
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.
Rodney
C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 4, 2002; the
Forum received a hard copy of the
Complaint on December 4, 2002.
On
December 6, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <gavagai.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
December 9, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 30, 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@gavagai.com by e-mail.
A
timely Response was received and determined to be complete on December 30, 2002.
On January 15, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Rodney C. Kyle as
Panelist.
On January 29, 2003, the Panel extended the due date for
its decision to February 3, 2003.
RELIEF SOUGHT
Complainant
requests that the domain name at issue be transferred from Respondent to
Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
In
the Complaint, Complainant basically makes four main contentions listed herein
as "(1)", "(2)", "(3)",
and "(4)". They
are
(1)
especially in Complaint paragraphs 5-19 to 5-22, that the domain name at issue
is registered by Respondent and is identical or
confusingly similar to a trademark
or service mark in which Complainant has rights and, more particularly,
(a) in paragraph 5-3, that the word
"gavagai" was coined by the linguistic philosopher
W.
V. Quine (1908-2000) and appears in his book Word and Object (MIT Press,
1960) where it is used as part of his argument for what he referred to as the
"indeterminacy of translation"
which holds that there can never be a
100% correct translation of a word,
(b) in paragraph 5-1, that Complainant is
a company that was incorporated under the
laws of the Province of British Columbia,
Canada, on June 3, 1999,
(c)
in paragraph 5-4, that in June, 1999, Complainant conducted a trademark search
using
Saegis to determine whether any other business was using the word
"Gavagai" and Complainant also conducted on-line
WHOIS searches at
Network Solutions, Inc., and Complainant’s searches did not identify any other
commercial or non-commercial uses
of "Gavagai" either by Respondent
or by anyone else,
(d) in paragraphs 5-2, 5-3, and 5-20, that
Complainant
(i) develops
and commercializes XML-based content-management software
aimed
at improving how computers "understand" and process human languages,
(ii) provides
consulting services in connection with its software,
(iii)
chose the
word "gavagai" as part of its corporation name (i.e. "Gavagai
Technology Incorporated") in view of the
software aim referred to in
contention "(1)(d)(i)" of this list and in view of contention
"(1)(a)" of this list,
and
(iv)
has been
doing or carrying on business in the US and Canada under said corporation name
since 1999 or, more specifically (as to date
but unspecifically as to
location), June 1999,
(e) in paragraph 5-5, that on August 6, 1999
Complainant was informed by a registry
agent
(which Complainant had been using to investigate the availability of
"Gavagai" as a domain name) that the domain name
at issue had been
registered by Respondent on August 5, 1999,
(f)
in paragraphs 5-8 and 5-20, that on April 21, 2000 Complainant filed with the
United States Patent and Trademark Office
an application for registration of
GAVAGAI
as a service mark, claiming a first use in 1999, and that the application was
granted on March 5, 2002,
(g) in paragraph 4-c, that Complainant
has United States Trademark Office
registration,
having application serial number 76032112, for said service mark in
International Class 042 and US Classes 100 and 101
for use in association with
computer services, namely, providing Internet and intranet search engines for
obtaining information from
computer networks, and, in International Class 035
and US Classes 100, 101, and 102, for use in association with electronic
document
management for others, namely, document retrieval document
categorization and document classification,
(h) in paragraph 5-6, that on August 6,
1999, Complainant registered the domain
name
<gavagai.net> with Network Solutions, Inc.,
(i) in paragraph 5-7, that Complainant
maintains its web site which resolves through
<gavagai.net>
and that Complainant has the registration of or entitlement to use each of the following domain names through which
Complainant’s web site also resolves: <gavagai.ca>,
<gavagai.technology.com>,
and <gavagai.technologies.com>, and
(j) in paragraphs
(i)
5-19, that when considering
whether a domain name is identical or
confusingly
similar to a complainant’s trademark or service mark, the ".com"
element of the domain name is ignored,
(ii)
5-18 and
5-21, that Policy paragraph 4(a)(i), referred to in paragraph 5-18 as being set
out in Complaint Exhibit 15, is satisfied
in that either or both of the
following are true:
(A) the domain name at issue is identical to
Complainant’s service mark GAVAGAI and
(B) the domain name at issue has the exact
same spelling as the opening word of Complainant’s corporation name, and
(iii)
5-22, that
Respondent’s registration of <gavagai.com> is confusing to
Complainant’s
customers and to those searching the World Wide Web for Complainant since a
likely search strategy for many users when
searching for Complainant’s business
would be to search under the domain name at issue and since such searchers will
reach an inactive
web site (as contended in contentions "(2)(b)" and
"(2)(c)" of this list) and not Complainant’s web site;
(2) especially in Complaint paragraphs 5-23
to 5-29, that Respondent has no rights or legitimate interests in respect of
the domain name
at issue and, more particularly,
(a) in paragraph 5-9, that Respondent is
not affiliated and has no connection with
Complainant and is not licensed by
Complainant to use said service mark,
(b) in paragraphs 5-10 and 5-23, that
(i)
for
approximately a year after registering it, the domain name resolved to a single
page showing a graphic and a notice to the effect
that the site was to be a
site for art and literature,
(ii)
no
substantive content was ever added to the site,
(iii)
since
approximately August, 2000 [Note from the Panel: "2002" in Complaint
paragraph 23 is so inconsistent with the rest
of the Complaint that it must
have been a typographical error for "2000"], Respondent has had via
the domain name either
simply an Apache server start page or no presence at
all, and
(iv)
"(i)",
"(ii)", and "(iii)" of this contention "(2)(b)"
indicate that Respondent has made no
real use of the domain at issue,
(c)
in paragraphs 5-11 and 5-24, that Respondent registered the domain name at
issue
over two years ago and
(i)
from
approximately August, 1999 to August, 2000, Respondent simply posted a single
page suggesting that a more substantive site would
follow, but no more
substantive site was ever posted by Respondent,
(ii)
since
approximately August, 2000, Respondent has simply posted (at the site that
resolves through that domain name) said Apache server
start page or else has
had no presence via the domain name at all,
(iii)
Respondent
has once renewed the registration, on or about August 6, 2001, and
(iv)
"(i)",
"(ii)", and "(iii)" of this contention "(2)(c)"
indicate that Respondent has since
then been passively holding it,
(d)
in paragraph 5-25, that passive holding of a domain name is not a legitimate
non-
commercial use under the Policy,
(e) in paragraphs 5-13, 5-14, and 5-26,
that on September 5, 2002 Complainant
attempted
to contact Respondent by courier letter (sent to Respondent’s contact
information supplied by Respondent in connection with
its domain name
registration) together with a hard copy of an unsuccessfully transmitted e-mail
Complainant had sent to Respondent
earlier that day (sent to the e-mail address
<rubyflux@erols.com> shown on its directNIC WHOIS registration
information, the
unsuccessfulness being indicated by the message-back to
Complainant of "Unknown local part in rubyflux in rubyflux@erols.com"
and being confirmed by an identical e-mail sent by Complainant on September 10,
2002 resulting in the same message-back) and, although
the letter was delivered
to Respondent on September 10, 2002, Respondent has failed to respond thereto,
(f) in paragraph 5-26, that a
non-response of the sort contended in contention "(2)(e)"
of
this list, coupled with contentions "(2)(c)" and "(2)(d)"
of this list, is evidence that a respondent (and
more particularly Respondent)
lacks rights or a legitimate interest in the respective domain name,
(g) in paragraphs 5-17 and 5-27, that
Respondent obtained two "trade name"
registrations
for "Gavagai" in the State of Maryland, one on August 18, 1999 and
the other on August 20, 1999, each showing
the name Timothy Scott Hoelscher
which name is the same name as the name of the contact person for the domain
name at issue, but
(i) one
of those two "trade name" registrations is now inactive and
(ii)
Respondent
makes no active use of <gavagai.com>
in connection with either "trade name" registration,
(h) in paragraphs 5-1, 5-17, and 5-27, that
Respondent does not appear to have registered any trademark or service mark
with the United
States Patent and Trademark Office for "Gavagai" and
that instead
(i) Complainant
has a wholly-owned subsidiary named Gavagai Technology (U.S.), Inc., which was
incorporated under the laws of the State
of Delaware on June 3, 2002,
(ii)
an on-line
search for "Gavagai" (for 45 US states as well as California
individually, Delaware individually, and Maryland
individually) in a database
of corporate registrations only shows (in addition to the "trade
name" registrations referred
to in contention "(2)(g)" of this
list) Complainant's Delaware subsidiary and Complainant’s California
registration of
that Delaware subsidiary and
(iii)
an on-line
search for "Gavagai" at the United States Patent and Trademark Office
shows one result, namely Complainant’s
service mark,
(i) in paragraph 5-28, that basically in view
of contentions "(1)(a)" and
"(1)(d)(i)" of this list the word "Gavagai" has no obvious
connection to Respondent’s
purported purpose for obtaining the domain name at
issue, which was to create a site for art and literature,
(j) in paragraph 5-29, that if a respondent
is a passive holder of a domain name at issue and if that respondent has no
obvious connection
with that domain name then that respondent has the burden of
showing that it has a right or legitimate interest, and
(k) in paragraph 5-29, that basically in view
of contentions "(2)(c)", "(2)(d)", "(2)(i)" and
"(2)(j)"
of this list Respondent has the burden of showing that it
has a right or legitimate interest in respect of the domain name at issue;
(3) especially in Complaint paragraphs 5-30
to 5-34, that Respondent registered and is using the domain name at issue in
bad faith and
(building on facts established through the contentions set out in
"(1)" and "(2)" of this list), more particularly,
(a) in paragraph 5-30, that passive holding
of an infringing domain name constitutes bad faith under the Policy and
similarly the fact
that one of Respondent’s Maryland "trade name"
registrations for "Gavagai" is inactive may be indicative of bad
faith since it may reflect the fact that Respondent has no active business in
connection with its registration of the domain name
at issue,
(b) in paragraph 5-31, that the timing of
Respondent’s registration of the domain name at issue may be evidence of bad
faith, since the
registration occurred just two months after the incorporation
of Complainant and while Complainant was conducting WHOIS searches
at domain
name registries,
(c) respectively in paragraphs 5-12, 5-15,
and 5-16, that Respondent's failure to respond to Complainant’s communications
further include
that
(i)
Complainant’s
President attempted to contact Respondent by phoning the phone number shown on
Respondent’s directNIC WHOIS registration
information, on September 4, 2002
(twice) and September 5, 2002 (twice) but on each occasion the phone rang
without anyone or any
answering machine answering it,
(ii)
on September
5, 2002, Complainant
requested a transfer to it of <gavagai.com>
through directNIC but the request was rejected since it "timed out"
without directNIC having received any response
from Respondent, and
(iii)
on November
2, 2002, Complainant’s Chief
Operating Officer called a phone number obtained from an online phone directory
for a "Timothy Hoelscher"
(being the contact name for Respondent
shown on its directNIC WHOIS registration information) of Bryans Road, Maryland
(being the
same address given for a "trade name" registration for
"Gavagai" made by Timothy Hoelscher in the State of Maryland,
as
contended through contention "(2)(g)" of this list), and thereupon
received a response from an answering machine and
left a message at the
answering machine asking Mr. Hoelscher to call Complainant regarding <gavagai.com> but Complainant did not
receive any return call to that message,
(d) in paragraph 5-32, that failure by
Respondent to respond to Complainant’s communications, as well as the fact that
Respondent supplied,
in connection with its registration of the domain name at
issue, an email address <rubyflux@erols.com> that did not function
when
Complainant attempted to use it, may be indications of bad faith,
(e) in paragraph 5-33, that a determination
of bad faith under the Policy is made from a consideration of all the
circumstances, and
(f) in paragraph 5-34, that the circumstances
of this case indicate that Respondent registered and is using the domain name
at issue in
bad faith, in that
(i) Respondent’s
holding of said domain name has been passive,
(ii) one
of Respondent’s Maryland trade registrations for "Gavagai" is
inactive,
(iii) the
timing of Respondent’s registration of the domain name may be indicative of bad
faith,
(iv)
Respondent
has not responded to Complainant’s communications regarding the domain name,
and
(v)
Respondent
has supplied an email address that did not function when Complainant attempted
to use it; and
(4)
especially
(a)
in paragraph 5-1, that evidence that is rationally probative of contention
"(1)(b)"
of
this list is in a certificate of incorporation of Complainant contained in
Complaint Exhibit 1,
(b)
in paragraph 5-4, that evidence that is rationally probative of contention
"(1)(c)"
of
this list is in a Saegis trademark search report contained in Complaint Exhibit
2,
(c) in paragraph 5-5, that evidence that
is rationally probative of contention "(1)(e)"
of
this list is in a WHOIS search result contained in Complaint Exhibit 3,
(d)
in paragraph 5-8, that evidence that is
rationally probative of contention "(1)(f)"
of
this list is in a certificate of registration of said mark contained in
Complaint Exhibit 5,
(e) in paragraph 5-6, that evidence that
is rationally probative of contention "(1)(h)"
of this
list is in a WHOIS search result contained in Complaint Exhibit 4,
(f)
in paragraph 5-19, that evidence that is rationally probative of contention
"(1)(j)(i)"
of this list is in two panel decisions respectively contained in Complaint
Exhibits 16 (Clerical Medical Investment
Group Limited v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) at p. 3) and 17 (Europcar International SA v. New
Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) at
p. 3),
(g) in paragraph 5-10, that evidence
that is rationally probative of contention
"(2)(b)(iii)"
of this list is in a copy of an Apache server start page posted at <gavagai.com> on September 5, 2002
(or May 9, 2002 since paragraph 5-10 and the Complaint Index of Exhibits are inconsistent
on this point)
and contained in Complaint Exhibit 6,
(h) in paragraph 5-25, that evidence
that is rationally probative of contention "(2)(d)"
of
this list is in two panel decisions respectively contained in Complaint
Exhibits 18 (American Home Products
Corporation v. Ben Malgioglio,
D2000-1602 (WIPO Feb.19, 2001) at p. 10) and 19 (Jim Karas v. Jim Karashavaran,
FA 124992 (Nat. Arb. Forum Nov. 4, 2002) at p. 4),
(i) in paragraph 5-13, that evidence that is rationally
probative of the e-mail aspects
of
contention "(2)(e)" of this list is in a copy of the e-mails of those
dates contained in Complaint Exhibit 7,
(j) in paragraph 5-14, that evidence that is rationally
probative of the couriered letter
aspects
of contention "(2)(e)" of this list is in a copy of the letter of
that date, and in a copy of the courier confirmation,
contained in Complaint
Exhibit 8,
(k) in paragraph 5-26, that evidence
that is rationally probative of contention "(2)(f)"
of
this list is in a panel decision contained in Complaint Exhibit 17 (Europcar International SA v. New Media Research in Romania SRL, Claim
No. FA 123906 (Nat. Arb. Forum Nov. 4, 2002) at p. 4),
(l) in paragraph 5-17, that evidence that is
rationally probative of contention "(2)(g)"
of
this list is in a copy of a CT Corporation Corporate Charter database (of United States corporate registrations)
on-line search result obtained November 25, 2002 for Maryland, contained in
Complaint Exhibit
13,
(m) in paragraph 5-1, that evidence that
is rationally probative of contention
"(2)(h)(i)"
of this list is in an extract of a certificate of incorporation of said
subsidiary, contained in Complaint Exhibit
1,
(n) in paragraph 5-17, that evidence that
is rationally probative of contention
"(2)(h)(ii)"
of this list is in respective copies of CT Corporation Corporate Charter
database (of United States corporate
registrations) on-line search results
obtained November 25, 2002 for
(i)
45 US
states, contained in Complaint Exhibit 10,
(ii)
California,
contained in Complaint Exhibit 11, and
(iii)
Delaware,
contained in Complaint Exhibit 12,
(o)
in paragraph 5-17, that evidence that is rationally probative of contention
"(2)(h)(iii)"
of this list is in a copy of a United States Patent and Trademark Office search
result for "Gavagai."
that is contained in Complaint Exhibit 14,
(p) in paragraph 5-29, that evidence that
is rationally probative of contention "(2)(j)"
of this
list is in a panel decision contained in Complaint Exhibit 16 (Clerical Medical Investment Group Limited
v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) at p. 4),
(q)
in paragraph 5-30, that evidence that is rationally probative of contention
"(3)(a)"
of this
list is in four panel decisions respectively contained in Complaint Exhibits 16
(Clerical Medical Investment Group
Limited v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) at p. 4), 17 (Europcar International SA v. New
Media Research in Romania SRL, Claim No. FA 123906 (Nat. Arb. Forum Nov. 4,
2002) at p. 5), 19 (Jim Karas v. Jim Karashavaran, FA 124992 (Nat. Arb.
Forum Nov. 4, 2002) at p. 5), and 20 (Hewlett-Packard
Company v. Greg Martineau, FA
95359 (Nat. Arb. Forum Aug. 30, 2000) at p. 3),
(r)
in paragraph 5-31, that evidence that is rationally probative of contention
"(3)(b)"
of
this list is in a panel decision contained in Complaint Exhibit 21 (Kencell Communications Ltd. v. Agosto Liko, CPR0101 (CPR Apr.11, 2001)
at pp. 5-6),
(s) in paragraph 5-15, that evidence that
is rationally probative of contention
"(3)(c)(ii)"
of this list is in the copy of the directNIC transfer request report contained
in Complaint Exhibit 9,
(t) in paragraph 5-32, that evidence that is
rationally probative of contention "(3)(d)"
of
this list is in a panel decision contained in Complaint Exhibit 16 (Clerical Medical Investment Group Limited
v. Clericalmedical.com, Case No.
D2000-1228 (WIPO Nov. 28, 2000) at p. 4), and
(u)
in paragraph 5-33, that evidence that is rationally probative of contention
"(3)(e)"
of
this list is in two panel decisions respectively contained in Complaint
Exhibits 21 (Kencell Communications Ltd.
v. Agosto Liko, CPR0101 (Apr. 11,
2001) at p. 5) and 22 (Telstra Corp. v. Nuclear Marshmallows, No. D2000-0003
(WIPO Feb. 18, 2000) at p. 10).
B.
Respondent
In
the Response, Respondent basically makes two main contentions listed herein as
"(1)" and "(2)". They are
(1)
especially as to above-listed Complaint contention "(1)", that
(a) Complainant asserts that
"gavagai" has a strong semantic association to the
software Complainant
produces,
(b)
despite contention "(1)(a)" of
this list,
(i) Complainant assumes that
Respondent’s use of "gavagai.com" will cause
significant confusion, and such
assumption presupposes
(A)
Complainant
has a sufficient current or potential customer or user base to confuse and
(B)
the
purposes and intentions of Complainant and Respondent are similar enough to
cause confusion,
(ii) as
to contention "(1)(b)(i)(A)" of this list, that Respondent does not
have
Complainant's
current or projected business statistics at hand and so cannot address that
contention except to contend that to the
public at large, and to the
content-management industry in particular, "gavagai" is not
particularly well known, either
as a word from Quine or as it applies to
Complainant’s business name, and
(iii) as
to contention "(1)(b)(i)(B)" of this list, that the contention is
obviated by Complainant being a software producer and
Respondent being a
prospective artistic community (i.e.
its domain name being for a web site which would serve content created by and
for users of that site – the idea being that such
a community would define
itself and present a vision of the world and a picture of the human condition
with a clearer focus and without
the constraints imposed by many commercial
web-based art repositories, an idea of precision of definition that is central
to Quine’s
concept of "gavagai") and that as a result there is no
intersection between Complainant or Respondent in form, function,
purpose or
intention, and
(c) it is unlikely that Quine had
XML-based content-management systems (such as
Complainant
contends to produce) in mind when Quine produced the word "gavagai";
and
(2)
especially as to above-listed Complaint contentions "(2)" and
"(3)”, that Respondent
registered
the domain name at issue with intent to use it in good faith and that
(a) especially above-listed Complaint
contentions "(2)(b)(iv)" and "(2)(c)(iv)" are
refuted by
Respondent having made strong efforts to put forth a legitimate web presence
and still having intentions of doing so, which
efforts included
(i) registering
"Gavagai" (in Maryland) as a fictitious name under which the company
would operate,
(ii) obtaining
a sales and use license for the selling of artwork and goods produced by the gavagai.com
community – this sales and use license has now expired, but its original
procurement does support the assertion that there was a
good faith effort to
use the site for commercial purposes unrelated to Complainant’s,
(iii)
purchasing
advertising in target (web-based) markets intended to solicit artistic
contributions to the online community (gavagai.com),
(iv)
opening a
bank account with Chevy Chase Bank in the name "Gavagai" to handle
financial transactions related to the site,
(v)
registration
of a Post Office box in Prince George’s County, Maryland, for the purpose of
receiving submissions, and
(vi)
purchasing
business-class web hosting with Matrixcubed Web Hosting Services, suitable for
producing a high-bandwidth site capable
of distributing digital content (images
and audio) to a large number of users,
(b) especially above-listed Complaint
contention "(2)(f)" is refuted by Respondent's
contentions
that Complainant is dissatisfied with Respondent’s schedule, that Complainant
sets forth an implied schedule for Respondent
to follow, and that instead
Respondent
(i)
registered
the domain name at issue before Complainant,
(ii)
maintained
said registration and paid all fees required to do so,
(iii)
has good
faith intentions to use said domain for Respondent’s purposes, unbound by any
schedule Complainant would like to impose,
and
(iv)
was
unwilling to communicate with Complainant because of Complainant’s antagonistic
tactics, and more particularly that
(A)
soon after
Complainant registered
"gavagai.net" with Network Solutions, Respondent received an
e-mail from Complainant containing only the text "why
did you steal my
domain name?",
(B)
said
initial email set a precedent of antagonism and harassment that has culminated
in this proceeding,
(C)
Complainant’s
representative made his intentions and his belief that he had been wronged
clear from the beginning,
(D)
Respondent
felt no need to discuss the situation further, since only one outcome would
likely have been acceptable to Complainant,
and
(E)
Respondent
did not communicate with Complainant because there was nothing to discuss,
(c) above-listed Complaint contention
"(2)(i)" is refuted by the parenthetical portion
of contention "(1)(b)(iii)" of
this list, and
(d) Respondent's WHOIS record is out of
date because, although Respondent
began
remedying that in Oct. 2002, the process has been a long one because of
Respondent's e-mail and address changes.
FINDINGS
The Panel's findings include the
following:
(i)
the domain name at issue, <gavagai.com>,
is registered by Respondent and is identical to a service mark, GAVAGAI,
registered in the United States Trademark Office as
registration 2,544,129 and
in which Complainant has rights, such that Policy paragraph 4(a)(i) is proven;
(ii) Respondent has no "rights or
legitimate interests in respect of the domain name", within the meaning of
that expression
as it occurs in Policy paragraph 4(a)(ii); and
(iii) Complainant has failed to prove
Respondent has registered and is using the domain name at issue in bad faith.
DISCUSSION
Introduction
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
and 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 Complainant must prove each of the following
three elements to obtain an order that a domain
name should be cancelled or
transferred:
(i)
the domain name registered by Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant
has rights;
(ii)
Respondent has no rights or legitimate interests in respect of the domain name;
and
(iii)
the domain name has been registered and is being used in bad faith.
In
view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to
ascertaining whether each of those three elements have been proven. First, that
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. "real evidence");
4. By
judicial inference (what is ascertained by reasoning from facts already
ascertained by one or more of the four methods here
outlined).[1]
Second,
especially as to mode "3", that Rule 10(d) provides that "The
Panel shall determine the admissibility, relevance,
materiality and weight of
the evidence." Third, as to construing and applying Rule 10(d), especially
as to whether mode "1"
rather than mode "3" applies: a
complainant’s pleading of fact that is not disputed (or, phrased differently,
not "put
in issue") by a respondent against whom it is contended, is
an admission by that respondent,[2]
so evidence tendered as being rationally probative of (i.e. as being
"relevant to") establishing that fact becomes immaterial,
and hence
inadmissible, as to establishing that fact.[3]
Fourth, as to whether mode "2" rather than either of mode
"1" or mode"3" applies, a canvassing of Anglo-American
law
and commentary shows that
It
was not desirable, nor indeed possible, to foreclose the trier's use of
background information but should the matter noticed be
in the forefront of the
controversy, should the fact be determinative, the law protected the adversary
by insisting that the matter
be so commonly known, and hence indisputable, that
its notice could not prejudice the opponent.[4]
and
that "The party who has the burden of proof on the issue may have to call
on the trier to judicially notice the fact when
it comes time to analyze the
question."[5]
In
setting out the lists of each party's contentions above (in the "Parties'
Contentions" portion hereof) the Panel endeavored
to use, to the extent
possible, the same vocabulary (though not necessarily the same structure) used
by the respective party. Hereinafter,
the Panel is no longer subject to that constraint.
Identical or Confusingly Similar
The Panel has stated the above-listed
Complaint contention "(1)(j)(ii)" in the way that it has, especially
as a result of
construing Complaint paragraph 21 in two respects. (The text of
Complaint paragraph 21 is "The domain name <gavagai.com>
registered by the Respondent is identical to the Complainant’s service mark
GAVAGAI and has the exact same spelling as the opening
word of the
Complainant’s company name. It is
therefore submitted that the first branch of the UDRP test is satisfied.")
In one respect, Complaint paragraph 21 is a
contention that, as a basic factual
matter, each of above-listed Complaint contentions "(1)(j)(ii)(A)"
and "(1)(j)(ii)(B)"
are true; in that respect, the Panel construes
the paragraph 21 occurrence of "and" as conjunctive, which, of
course, is
the presumptive meaning for "and". In another respect,
paragraph 21 does not appear to the Panel to be a contention that,
to satisfy
Policy paragraph 4(a)(i), both of what are listed above as Complaint
contentions "(1)(j)(ii)(A)" and "(1)(j)(ii)(B)"
are
required but instead appears to the Panel to be a contention that either of
them suffices; in that respect, the Panel construes
the paragraph 21 occurrence
of "and" as disjunctive and does so especially on the basis that such
a departure from the
presumptive meaning of "and" is warranted by
each of the sentences of Complaint paragraph 21, and by that paragraph as
a
whole, as read in the context of the Complaint as made under the Policy.
In relation to Policy paragraph 4(a)(i),
the Response does not put in issue above-listed Complaint contentions
"(1)(a)"
to "(1)(j)(ii)" except, apparently, as to the
preamble of "(1)(j)(ii)" whereby Complainant contends that Policy
paragraph
4(a)(i) is proven. Therefore, three results follow. First, in relation to
Policy paragraph 4(a)(i), the facts contended
in those Complaint contentions
are admitted by Respondent except that Respondent does not admit that Policy
paragraph 4(a)(i) is
proven. Second, other than Complaint Exhibit 5 (which is
basically contended for through above-listed Complaint contentions
"(1)(f)",
"(1)(g)", and "(4)(d)"), evidence
submitted as rationally probative of those Complaint contentions (i.e. the
evidence contended, mainly by above-listed Complaint contentions
"(4)(a)", "(4)(b)", "(4)(c)", "(4)(e)",
and "(4)(f)", to be contained in Complaint Exhibits 1, 2, 3, 4, 16,
and 17) is in that respect immaterial and therefore
inadmissible. Third, for
the purposes of this proceeding, the facts contended by above-listed Complaint
contentions "(1)(a)"
to "(1)(j)(ii)" (other than
"(1)(f)", "(1)(g)" and the "(1)(j)(ii)" preamble
contention that
Policy paragraph 4(a)(i) is proven) are ascertained by those
contentions themselves.
However, in relation to at least Policy
paragraph 4(a)(i), by above-listed Response contention "(1)" the
Response does put
in issue the preamble of above-listed Complaint contention
"(1)(j)(ii)" whereby Complainant contends that Policy paragraph
4(a)(i) is proven. In that respect, Respondent basically makes two contentions.
Each is by either or both of pleading or argument,
but not by evidence. The
first basically is, especially by above-listed Response contention
"(1)(b)(ii)", that "Gavagai"
is not distinctive of services
provided by Complainant. The second basically is, especially by above-listed
Response contention "(1)(b)(iii)",
that in the Policy paragraph
4(a)(i) expression "identical or confusingly similar" the word
"or" is to be read
conjunctively (i.e. as "and") rather
than disjunctively (i.e. as "or").
In relation to the contended service mark
registration, the first of those two contentions by Respondent does not avail
Respondent,
especially in view of reasoning set out in seven points enumerated
in this paragraph. First, by contending against the distinctiveness
of the
registered service mark, Respondent basically contends against the validity of
that registration, and therefore raises an
issue of mixed law and fact: the
issue of law is of what if any rights are defined by the registration and the
issue of fact is whether,
as ascertained in accordance with law, there are
facts dispositive of those rights. Second, especially in view of the issue of
law,
the Panel takes judicial notice of 15 U.S.C. §1057 (entitled "Certificates
of registration")[6]
and of 37 C.F.R. §2.151 (entitled "Certificate")[7]
made in accordance therewith. Third, especially in view of the issue of fact,
above-listed Complaint contentions "(1)(f)"
and "(4)(d)"
direct the Panel towards Complaint Exhibit 5, by contending that said Exhibit
contains a certificate of Complainant
registration in the United States Patent
and Trademark Office for the service mark GAVAGAI that at least includes the
information
contended in above-listed Complaint contentions "(1)(f)" and
"(1)(g)". Fourth, the Panel finds the Response puts
in issue the
facts contended in above-listed Complaint contentions "(1)(f)" and
"(1)(g)" so, in view of the second
point enumerated in this
paragraph, the evidence contained in Exhibit 5 (i.e. the certificate of the
service mark registration) is
material, relevant, and admissible: it appears to
be a copy of a certificate issued completely in accordance with 15 U.S.C.
§1057(a)
and C.F.R. §2.151, and so, by 15 U.S.C. §1057(b), is "prima facie
evidence of the validity of the registered mark and of the
registration of the
mark, of the registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the registered
mark in commerce on or in connection with
the goods or services specified in the certificate". Fifth, having
overcome three
initial concerns pertaining to the identity of the registrant,[8]
the Panel finds that as to Policy paragraph 4(a)(i) the service mark
registration certificate proves the facts contended for in above-listed
Complaint
contentions "(1)(f)" and "(1)(g)". Sixth, as to Policy
paragraph 4(a)(i), in this proceeding there
is no material evidence contrary to
any of the prima facie evidence provided by the certificate. Seventh, the Panel
also finds that
the certificate also proves that the registration basically has
the following three further attributes: the registration number is
"2,544,129", the registration "shall remain in force for TEN
(10) years" from the date of the registration (i.e.
from March 5, 2002),
and the registration is based on a date of first use (and of first use in
commerce) of "12-0-1999".
In relation to the registered service
mark, the second of the two Response contentions (i.e. that in the Policy
paragraph 4(a)(i)
expression "identical or confusingly similar" the
word "or" is to be read conjunctively) does not avail Respondent,
especially in view of three points. First, the presumptive meaning of
"or" is disjunctive rather than conjunctive. Second,
there do not
appear to be any indications expressly or implicitly in Policy paragraph
4(a)(i), or elsewhere in the Policy or the
Rules, or, for that matter, anywhere
else of which the Panel is aware, for departing from applying that presumptive
meaning to that
occurrence of "or" in Policy paragraph 4(a)(i).
Third, the presumptive meaning for that occurrence of "or" is
confirmed by Shirmax Retail
Ltd./Détaillants Shirmax Ltée v. CES
Marketing Group Inc., eResolution Case Number AF-0104, Mar. 20, 2000, which
includes that
[The respondent] submits that under … trademark
law, mere identicality is insufficient to support a conclusion that two marks
are
confusing, and encourages this panel to interpret paragraph 4(a)(i) in the
conjunctive rather than the
disjunctive. ...
The panel declines [the respondent's] invitation
to stray from the clear language of the ICANN Policy. Mere identicality of a
domain
name with a registered trademark is sufficient to meet the first element
of the test, even if there is no likelihood of confusion
whatsoever.
and
by Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO Nov. 15,
2000), which includes that "The panel considers this issue [of
identicality or confusing similarity]
is to be resolved by comparing the
trademark and the disputed domain name, without regard to the circumstances
under which either
may be used" and
"Virtual or essential identity is
sufficient for the purposes of paragraph 4(a)(i) of the Policy."
In view of all of the above (and
especially the four immediately preceding paragraphs), Policy paragraph 4(a)(i)
is proven, in that
the domain name at issue, <gavagai.com>, is registered by Respondent and is identical to a
service mark, GAVAGAI, registered in the United States Trademark Office as
registration 2,544,129 and in which Complainant has rights.
Having
made the finding set out in the immediately preceding paragraph, in relation to
Policy paragraph 4(a)(i) the Panel need not
consider further (or at all, as the
case may be) whether, to what extent, and with what consequence, the Response
puts in issue above-listed
Complaint contentions "(1)(j)(ii)(B)" and
"(1)(j)(iii)". In doing so, the Panel is aware of decisions under the
Policy wherein other panels raised views,[9]
or applied views,[10]
that Policy paragraph 4(a)(i) requires trademark or service mark rights at the
time of the registration of a domain name at issue.
As still other panels have
done,[11]
this Panel will deal hereinafter with whether Complainant had trademark or
service mark rights at the time of the registration of
the domain name at
issue.
Rights or Legitimate Interests
The context in which this part of the
discussion occurs includes Policy paragraph 4(c) and Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000). Policy paragraph 4(c) is basically
directed from a domain name registrar to a domain name registrant
and
prospective mandatory administrative proceeding respondent, and includes that
When you receive a complaint, you should
refer to [Rule 5] in determining how your response should be prepared. Any of
the following
circumstances, in particular but without limitation, if found by
the Panel to be proved based on its evaluation of all evidence presented,
shall
demonstrate your rights or legitimate interests to the domain name for purposes
of [Policy paragraph] 4(a)(ii):
(i) before any notice to you of the
dispute, your use of, or demonstrable preparations to use, the domain name or a
name corresponding
to the domain name in connection with a bona fide offering
of goods or services; or
(ii) you (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired
no trademark or service mark rights; or
(iii) you are making a legitimate
noncommercial 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.
(See footnote 2 hereof for some
provisions of Rule 5.) Do The Hustle, LLC
v. Tropic Web includes that when,
as in this case, "the complainant has made a prima facie showing, the burden of production shifts to the
respondent to show by providing concrete evidence that it has rights to or
legitimate
interests in the domain name at issue" (emphasis in original).
The Response does not put in issue
above-listed Complaint contentions "(2)(a)", "(2)(b)(i)",
"(2)(b)(ii)",
"(2)(b)(iii)", "(2)(c)(i)",
"(2)(c)(ii)", "(2)(c)(iii)", "(2)(d)",
"(2)(e)",
"(2)(g)", "(2)(h)", and
"(2)(j)". Therefore, three results follow. First, the facts contended
in those
Complaint contentions are admitted by Respondent. Second, evidence
submitted as rationally probative of those Complaint contentions
(i.e. the
evidence contended, mainly by above-listed Complaint contentions
"(4)(g)" to "(4)(j)" and "(4)(l)"
to
"(4)(p)", to be contained in Complaint Exhibits 6, 18, 19, 7, and 8
and in Complaint Exhibits 13, 1, 10, 11, 12, 14,
and 16) is in that respect
immaterial and therefore inadmissible. Third, for the purposes of this
proceeding, the facts contended
by the Complaint contentions listed in the
first sentence of this paragraph are ascertained by those contentions
themselves.
The Response does, however, directly or
indirectly put in issue above-listed Complaint contentions
"(2)(b)(iv)", "(2)(c)(iv)",
"(2)(f)",
"(2)(i)", and "(2)(k)".
As for above-listed Complaint contentions
"(2)(b)(iv)" and "(2)(c)(iv)", Respondent puts them in
issue in the
sense of contending (by either or both of pleading or argument,
but not by producing evidence) in above-listed Response contention
"(2)(a)" that there are further facts which amount, respectively, to
Respondent making real use of the domain at issue
and not passively holding it.
The facts contended in above-listed Complaint contention "(2)(g)" are
already ascertained
by that contention itself and Respondent has not submitted
any evidence. Therefore, unless the Response is considered to have implicitly
adopted the evidence in Complaint Exhibit 13 (referred to in above-listed
Complaint contention "(4)(l)") as being rationally
probative of
above-listed Response contention "(2)(a)(i)", there is no evidence as
to the contentions contained in Response
contention "(2)(a)". Even if
the Panel were to consider Complaint Exhibit 13 as having been adopted by the
Response, Respondent
would still not have met its burden: what are referred to
as Maryland "trade name" registrations in the search results
from the
CT Corporation Corporate Charter database actually are merely what are commonly
referred to as business name registrations[12]
and it seems to the Panel that they do not, per
se, confer or evidence "rights or legitimate interests in respect of
the domain name" within the meaning of that expression
as it appears in
Policy paragraph 4(a)(ii). Accordingly, Respondent's contention does not avail.
As for above-listed Complaint contention
"(2)(f)", Respondent puts it in issue in the sense of contending (by
either or
both of pleading or argument, but not by producing evidence) in
above-listed Response contention "(2)(b)" that there are
further
facts which amount to justifications of Respondent non-responsiveness. The
facts contended in above-listed Complaint contentions
"(1)(e)" and
"(2)(c)(iii)" are already ascertained by those contentions themselves
and Respondent has not submitted
any evidence. Therefore, unless the Response
is considered to have implicitly adopted the evidence in Complaint Exhibit 3
(referred
to in above-listed Complaint contention "(4)(c)") as being
rationally probative of above-listed Response contention "(2)(b)(i)",
there is no evidence as to the contentions contained in Response contention
"(2)(b)". Even if the Panel were to consider
Complaint Exhibit 3 as
having been adopted by the Response, Respondent would still not have met its
burden: the Policy would basically
be rendered a nullity if a respondent's
domain name registration that is the very subject-matter of a mandatory
administrative proceeding
under the Policy could, per se, confer or evidence "rights or legitimate
interests" within the meaning of that expression as it appears in Policy
paragraph
4(a)(ii) and as a result it has long been well and clearly
established, by mandatory administrative proceeding decisions under the
Policy,
that such registrations do not do so. (See e.g. the following decisions, and
decisions in which they are cited: N.C.P.
Marketing Group, Inc. v. Entredomains,
D2000-0387 (WIPO July 5, 2000) and Vestel
Elektronik Sanayi ve Ticaret AS v. Mehmet
Kahveci, D2000-1244 (WIPO Nov. 11, 2000). Accordingly, Respondent's
contention does not avail.
As for above-listed Complaint contention
"(2)(i)", Respondent puts it in issue in the sense of contending (by
either or
both of pleading or argument, but not by evidence) in above-listed
Response contention "(2)(c)" that Respondent refutes
Complainant's
contention that the word "Gavagai" has no obvious connection to Respondent’s
purported purpose for obtaining
the domain name at issue. (The purported
purpose which Complainant contends in above-listed Complaint contention
"(2)(b)(i)",
which Respondent does not dispute and therefore admits,
and which is therefore ascertained for the purposes of this proceeding, is
to
create a site for art and literature.) The Panel finds that Complainant, by
contending Respondent's purported purpose, was contending
that the statements
of purported purpose were made by Respondent but was not contending that those
statements of purported purpose
were true. In so finding, the Panel did not
evaluate any evidence; there was no evidence. Accordingly, Respondent's
contention does
not avail. (It seems unfortunate to the Panel that neither
party submitted any evidence as to their own connection, or as to the
opposite
party's lack of connection, to Word and Object. However, the parties
contentions as to such connections appear to be more argument than pleading,
and when it comes to the Panel's
ascertaining whether there has been Policy
paragraph 4(a)(iii) bad-faith registration and bad-faith use, the Panel is not
subject
to the Policy paragraph 4(c) constraint of "evaluation of all
evidence presented" and instead largely has the Policy 4(b)
preamble prescription
of "circumstances … found by the Panel to be present".)
As to above-listed Complaint contention
"(2)(k)", Respondent puts it in issue in the sense of contending
against above-listed
Complaint contentions "(2)(c)" and
"(2)(i)" in the ways described in the fourth and sixth paragraphs of
this
part of this "Discussion". In view of the discussions and
findings in those paragraphs, Respondent's contention does not
avail.
In view of the seven immediately
preceding paragraphs, the burden of production has shifted to Respondent but
Respondent has not produced
any evidence, and has not adopted appropriate
evidence, to meet that burden.
In summary, and with reference to Policy
paragraph 4(c), the Panel makes four further findings.
Policy paragraph 4(c)(iii) is phrased in
the present tense, yet it has been ascertained for the purposes of this
proceeding that Respondent
is not using the domain name at issue within the
meaning of "use" as that word appears in that paragraph; Policy
paragraph
4(c)(iii) cannot avail Respondent.
As for Policy paragraph 4(c)(ii), it
cannot reasonably be said to be contended for in any way in this proceeding.
As for Policy paragraph 4(c)(i), as found
above, the Panel's view is that the two Maryland business name registrations do
not, per se, individually or
collectively confer or evidence "rights or legitimate interests in respect
of the domain name" within
the meaning of that expression as it occurs in
Policy paragraph 4(a)(ii). Even if either or both of those registrations did so
confer
or evidence, under Policy paragraph 4(c)(i) Respondent had the burden of
producing evidence that either or both of those registrations
were obtained
before Respondent had any notice of the dispute. Respondent has contended
(solely by way of pleading or argument) that
it received an e-mail from
Complainant, basically notifying Respondent of the dispute, "shortly
after" Complainant registered
<gavagai.net>. Registration of that
domain name occurred on the calendar day that immediately followed the day on
which Respondent
registered the domain name at issue, and there is no evidence
as to whether either or both of the Maryland business name registrations
preceded, or instead followed, that e-mail, so, in respect of those business
name registrations, Policy paragraph 4(c)(i) cannot
avail Respondent. As for
specifically when (in relation to that contended e-mail) the graphic and notice
(to the effect that the
site was to be for art and literature) first resolved
through the domain name at issue, there is a similar lack of evidence, so
similar
reasoning applies such that once again Policy paragraph 4(c)(i) cannot
avail Respondent.
As for the preamble of Policy paragraph
4(c), in this proceeding there are no indications that it avails Respondent.
In view of all of the above (and
especially the thirteen immediately preceding paragraphs), the Panel finds that
Policy paragraph
4(a)(ii) is proven, in that, based on the Panel's evaluation of all evidence presented,
Respondent has no "rights or legitimate interests in respect of the domain
name",
within the meaning of that expression as it occurs in Policy
paragraph 4(a)(ii).
Registration and Use in Bad Faith
The context in which this part of this
"Discussion" occurs includes Policy paragraph 4(b).
Policy paragraph 4(b) is basically
directed from a domain name registrar to a domain name registrant and
prospective mandatory administrative
proceeding respondent, and includes that
For the purposes of [Policy paragraph]
4(a)(iii), the following circumstances, in particular but without limitation,
if found by the
Panel to be present, shall be evidence of the registration and
use of a domain name in bad faith:
(i) circumstances indicating that you
have registered or you have acquired the domain name primarily for the purpose
of selling, renting,
or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark or service mark or to
a
competitor of that complainant, for valuable consideration in excess of your
documented out-of-pocket costs directly related to
the domain name; or
(ii) you have registered the domain name
in order to prevent the owner of the trademark or service mark from reflecting
the mark in
a corresponding domain name, provided that you have engaged in a
pattern of such conduct; or
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your
web site or
other on-line location, by creating a likelihood of confusion with
the complainant's mark as to the source, sponsorship, affiliation,
or
endorsement of your web site or location or of a product or service on your web
site or location.
As for each of Policy paragraphs 4(b)(i),
4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith
registration
and provide that if any one of such types of registration has been
ascertained by a panel then bad-faith use is in turn evidenced
via application
of the respective one of those three provisions. None of those provisions can
reasonably be said to be contended
for in any way in this proceeding,
notwithstanding above-listed Complaint
contentions "(1)(j)(iii)" (that the registration of the domain name
at issue is "confusing")
and "(3)(b)" and
"(3)(f)(iii)" (that the timing of Respondent's registration of the
domain name at issue may
be evidence of bad faith). Even if the Panel finds
that Complainant has contended for the application of any of those three Policy
paragraph 4(b) provisions, either or both of Respondent's having contended that
"Gavagai" is not distinctive of services
provided by Complainant and
that Respondent registered the domain name at issue with intent to use it in
good faith, can then just
as reasonably be construed as being a contention by
Respondent that, at the time of Respondent's registration of the domain name
at
issue, "Gavagai" was not actually
distinctive (or, perhaps, was at least not expected by Respondent to be
distinctive) of services provided by Complainant. The procedural
result is that
Respondent thereby basically puts Complainant to proving, that at the time of
Respondent's registration of the domain
name, Complainant's contended-for mark
(i.e. common-law trademark contended for via above-listed Complaint contention
"(1)(j)(ii)(B)"
rather than registered service mark contended for via
above-listed Complaint contention "(1)(j)(ii)(A)") was, or perhaps
was at least expected by Respondent to become, distinctive of services provided
by Complainant. As set out hereinafter, Complainant
would not meet (and indeed
has not met) the burden of proving such distinctiveness or knowledge;
Complainant has not produced any
evidence of use of the mark during the pertinant
time or that such use resulted, or perhaps was at least expected by Respondent
to
result, in such distinctiveness or knowledge, and the Panel is of the view
that neither judicial notice nor judicial inference is
available to the Panel
to prove such disitnctiveness or knowledge.
As for Policy paragraph 4(b)(iv), it
basically defines a type of bad-faith use and provides that if such type of use
is ascertained
by a panel then bad-faith registration is in turn evidenced via
application of that provision. It does not avail Complainant despite
what may
be taken as Complainant's attempts to have the Panel apply that provision
either to Respondent's active use (if indeed there
was such use) of the domain
name at issue or to Respondent's passive use (as contended for via e.g.
above-listed Complaint contentions
"(2)(b)" and "(2)(c)")
of the domain name at issue.
If there was Policy paragraph 4(b)(iv)
active use, it was in approximately the first year of the domain name
registration, during
which time the graphic and notice (to the effect that the
site was to be for art and literature) resolved through the domain name
at
issue; yet Complainant apparently contends Respondent is, and always has been,
merely passively holding the domain name at issue.
In any event, regarding that
year, Respondent might well be considered to "have intentionally attempted
to attract, for commercial
gain, Internet users to [Respondent's] web site or
other on-line location" within the meaning of that expression as it occurs
in Policy paragraph 4(b)(iv). However, once again, with both the
distinctiveness of the contended-for mark and Respondent's knowledge
of its
actual or prospective existence being at issue between the Parties, the Panel
cannot find (whether by judicial notice, or
judicial perception, or judicial
inference) that such attempt was an intentional attempt to attract "by
creating a likelihood
of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of [Respondent's] web site or
location or of a product or service on your web site or location."
As for use of the domain name at issue,
after that first year, the Panel does not get even as far along into Policy
paragraph 4(b)(iv)
as the Panel does in the immediately preceding paragraph
hereof: the Panel cannot find (whether by judicial notice, or judicial
perception,
or judicial inference) that such attempt was an intentional attempt
to attract "for commercial gain". Even if the Panel
were to find that
Respondent (as put by Policy paragraph 4(b)(iv)) "intentionally attempted
to attract, for commercial gain",
once again, with both the
distinctiveness of the contended-for mark and Respondent's knowledge of its
actual or prospective existence
being at issue between the Parties, the Panel cannot
find (whether by judicial notice, or judicial perception, or judicial
inference)
that circumstances within the meaning of the remaining wording of
Policy paragraph 4(b)(iv) are proven.
The numerically designated provisions of
Policy paragraph 4(b) do not avail Complainant. In view especially of the
following paragraphs
hereof, the Panel finds that neither does the preamble of
Policy paragraph 4(b) avail Complainant. Instead the Panel finds that
Complainant
has not proven Respondent has registered the domain name at issue
in bad faith and, so finding, that in the circumstances of this
case the Panel
need not find whether Respondent has used the domain name at issue in bad
faith.
When it comes to Complainant's
contended-for common-law trademark rights (ultimately contended for via
above-listed Complaint contention
"(1)(j)(iii)(B)"), Respondent does
indeed contend against the validity thereof and so puts it in issue. When it
comes to
such contended-for rights there basically are not the instruments (i.e.
statutes such as 15 U.S.C. §1057 and regulations such as
37 C.F.R. §2.151)
referred to in the above discussion of Policy 4(a)(i). Instead, the instrument
is basically the common-law of trademarks;
for it to operate in Complainant's
favor in this proceeding would basically require the Panel to ascertain that
there are facts that
are dispositive of Complainant having common-law trademark
rights. (Those facts basically are use of the contended-for-trademark
in trade,
by or on behalf of Complainant or Complainant's predecessor in title, to the
extent that the mark is associated with and
distinguishes Complainant's
products-- whether wares or services-- from the products of other persons.)
Otherwise, it would basically
operate in Respondent's favor. In this case it
operates in Respondent's favor.
Has Complainant not merely pleaded and
argued, but instead evidenced, that especially in the approximately nine weeks
from the date
Complainant was incorporated (i.e. June 3, 1999) to the date the
domain name at issue was registered (i.e. 5 August, 1999), Complainant
used the
designation "Gavagai" such that it became distinctive of, or perhaps
was at least expected by Respondent to become
distinctive of, Complainant's
services? The short answer is "no", for at least five reasons.
First, what is the Panel to make of the
date of first use shown on the certificate of the 2,544,129 service mark
registration, i.e.
"12-0-1999"? Clearly, there is neither a zero day
of any month nor a twelfth day of a zero month. The Panel takes judicial
notice
of United States Patent and Trademark Office practice regarding certificates to
the extent that doing so is possible by analogy
with TEAS. (Regarding TEAS and,
therein, the "Trademark/Service Mark Application, Principal Register"
form, see footnote
8 hereof.) In TEAS, the "Trademark/Service Mark
Application, Principal Register" form has, regarding each applied for
class
of goods or services, a "Basis for Filing and Goods and/or Services
Information" section which includes two "Date
of First Use of the
Mark" fields (i.e. one as to use "Any where" and the other as to
use "in Commerce").
The instructions for each of those fields include
that "If the date consists of only a month and year, or only a year, you must
enter '00' in the appropriate spaces; e.g., 00/00/1989." The Panel is
assisted thereby , and finds the certificate of the 2,544,129
registration is
evidence that the date of the registrant's (i.e. Respondent's) first use of the
registered mark as a service mark
is some unspecified date in 1999.
Second, there is the
expression itself: "gavagai". It is an admittedly coined expression
but one which was coined by a third
party (i.e. Quine) rather than Complainant,
and which appears to have been widely published for approximately forty years
before
the pertinent period. There is no indication it results from or even is
evocative of some combination of expressions concerning solely,
or even mainly,
Complainant's services or even Complainant's field of endeavor. Moreover, the
Panel takes judicial notice that the
indeterminacy of translation is indeed
very much a concern of persons involved in art generally and in literature
particularly, especially
beginning from at or around the start of the 20th
century and onwards to the present;[13]
concerns about the indeterminacy of translation are not limited to persons
providing or otherwise involved with the sorts of services
provided by
Complainant, and Respondent's argument is entirely plausible.
Third,
Complainant has existed since June 3, 1999 and the Panel notices that
Complainant has had the same corporation name since its
inception. The Panel
also notices that by common law (which appears to not be derogated from in any
substantial respect on this point
by Company
Act, R.S.B.C. 1996, c. 62, ss. 15 to 18 and which is perhaps even bolstered
by that statute), the law of Complainant's incorporating
jurisdiction and main
place of business during the pertinent time is of similar effect to that
described above in the text associated
with footnote 12 hereof, as to Maryland
business name registrations. Specifically, merely incorporating under a
particular corporation
name does not result in e.g. trade name rights or
trademark rights. Each of those types of rights instead result from the type of
designator use, and results, respectively prescribed by trade name law and by
trademark law.
Fourth,
notwithstanding the international, and indeed global, reach of the Internet and
of the domain name system used therein, there
is no evidence (indeed not even a
pleading or argument) by Complainant as to other than its present use (or
entitlement to use) of
Complainant's various domains; there is no contention as
to channels of trade and as to whether and to what extent in the pertinent
time
period the contended-for mark would have become distinctive of Complainant's
services or of how Respondent would have come to
have knowledge of said
contended-for mark's actual or prospective existence as a trademark. (Its
existence and accessibility as a
term in Quine's published philosophy are, of
course, another matter.) Basically, in no more than nine weeks (and the actual
date
of first use is not even evidenced so nine weeks is the maximum), how did
a corporation in British Columbia, Canada, purportedly
come to have a common-law
service mark of which an individual in Maryland would have had knowledge?
Complainant basically had the
burden of answering that question but did not do
so.
In
view especially of the four immediately preceding paragraphs, the Panel notes John Ode d/ba ODE and ODE - Optimum Digital
Enterprises v. Intership Limited D2001-0074
(WIPO May 1, 2001), which includes that "There are ample authorities
supporting the view that a trademark that did
not exist at the time the
disputed domain name was registered cannot serve as the basis for a claim under
the ICANN Policy, since
it is impossible for the domain name to have been
registered in bad faith" and which then proceeds to list the following
decisions:
Sealstore.com L.L.C. v. Sealpool Ltd., No. FA96535 (NAF Mar. 8, 2001);
e-Duction, Inc. v. Zuccarini, No. D2000-1369 (WIPO Feb. 5,
2001); Foresight Corp. v. Servos, No. AF-0473 (eResolution Dec.15,
2000); Open Systems Computing AS v. Alessandri, No. D2000-1393 (WIPO Dec.
11, 2000); VBW Kulturmanagement &
Veranstaltungs GmbH v. Ohanessian M,
No. D2000-0675 (WIPO Oct. 18, 2000); ecast,
Inc. v. Ecorp.com, No. AF-0308
(eResolution Oct. 11, 2000); Magic
Software Enterprises Ltd. v. Evergreen
Technology Corp., No. D2000-0746 (Oct. 4, 2000); Passion Group Inc. v. Usearch,
Inc., No. AF-0250 (eResolution Aug. 8, 2000); Highlight Communications AG v. Auto
Systems Inc., No. 2000-0512 (WIPO July 25, 2000); and Meteor Mobile Communications v. Dittmar,
No. D2000-0524 (WIPO July 17, 2000).
Also,
as to specifically enumerated items in above-listed Complaint contention
"(3)", three further points occur to the
Panel.
First,
as to above-listed Complaint contention "(3)(a)", it is human
activity, not things, that infringe legal interests
such as trademark rights,
so it seems to the Panel that a domain name, per se, cannot infringe any legal interests, whether trademark
legal interests or otherwise. Furthermore, assuming (only for the purposes
of
illustration) that trademark rights in "Gavagai" existed in the
pertinent period, trademark rights are not rights against
all uses of the mark
but rather, taking the wording of 15 U.S.C. §1057(b) as illustrative, the
service mark registration certificate
is basically evidence of
"registrant’s exclusive right to use the registered mark in commerce on or
in connection with the goods
or services specified in the certificate",
not as to absolutely any and every use in connection with absolutely anything
and
everything. For example, "art and literature" does not seem to
the Panel to be the same as or confusingly similar to the
services specified in
Respondent's service mark registration certificate (i.e. see above-listed
Complaint contention "(1)(g)")
even if the word in the domain name
and the word in the trademark are identical. Cf. the example often given in
panel decisions under
the Policy, of APPLE computers and APPLE records.
Respondent is apparently not using the domain name, let alone using it in a way
that amounts to trademark infringement. Instead, Respondent has contended
against (as per above-listed Response contentions "(1)(b)(iii)"),
and
has accordingly put Complaint to proving, confusing use amounting to
infringement; Complainant has not proven that Respondent's
passive holding of
the mark is an infringing use.
Second,
as for above-listed Complaint contention "(3)(b)", Complainant has
not pleaded, let alone evidenced, that during
the pertinent period (i.e. up to
the time Complainant effected the registration of the domain name at issue)
Respondent had actual
or constructive notice of either or both of Complainant
or of Complainant's contended-for mark.
Third,
as for Complaint contentions "(3)(c)" and "(3)(d)", in the
circumstances of this proceeding, Complainant
endeavors to make too much of
those contended-for facts, and, although Respondent does not deny the basic
facts, Respondent does
plead further facts (i.e. above-listed Response
contentions "(2)(b)(iii)", "(2(b)(iv)",
and"(2)(d)")
in support of its contention of good faith. Contact
information (such as for e-mail and municipal addresses) of entities changes
from time to time; there is nothing inherently indicative of bad faith about
that in general and the circumstances of this case do
not indicate otherwise.
Did this Panel come to a complete standstill when it encountered the differences
in addresses, and other
information, connected with Complainant's contended-for
service mark registration? No. Moreover, although Respondent has not contended
against the basic facts of non-responsiveness, per se, it has submitted a plausible explanation. Furthermore,
Complainant's contended phone calls cause the Panel some concern. Complainant's
contention include that two calls were made on each of two occasions, for a
total of four calls; yet Complainant's contentions are
silent as to how long a
time there was between the calls on any given calendar day (and the example
occurs to the Panel that if someone
is out, calling them twice within a longer
space of time may well be more efficacious of actually reaching them than
calling twice
within a relatively shorter space of time); and they are silent
as to the time of day or night each call was made; and (despite the
fact that
the parties are on opposite sides of the North American continent and therefore
separated by around three hours) are silent
as to whether time zone differences
were accounted for in selecting the time when the calls were made. In sum, the
Panel does not
find the circumstances of this case call for the inferences of
bad faith Complainant contends are based on either or both of non-responsiveness
and incorrect contact information.
Lastly, each one of the seven panel
decisions submitted by Complainant as part of its Policy paragraph 4(a)(iii)
contentions is distinguished
from this case both procedurally and
substantively. Procedurally, every one of those cases was a default decision;
as a result, unlike
this Panel, the panels in those cases basically did not
have the opportunity to receive and consider contentions from respondents
and
did not have the duty, upon a respondent putting complainant contentions in
issue, to basically consider the complainant as having
been put to the proof of
such contended-against contentions. Substantively, in so far as Complainant has
basically contended that
the copies of those seven cases show fact-sets of either
or both of bad-faith registration and bad-faith use that are sufficiently
close
to this case to be useful analogies, the short answer is that those decisions
are simply not analogous to, and indeed are clearly
distinguished from, the
contended and ascertained facts of this case.
DECISION
In view of all of the above, the Panel
dismisses the Complaint.
Rodney C. Kyle, Panelist
Dated: February 3, 2003
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