DECISION

eMachines, Inc. v. Emachine, Inc.

Claim Number: FA0305000159454

PARTIES

Complainant is eMachines, Inc., Irvine, CA, USA (“Complainant”) represented by Tawnya R. Wojciechowski, of Sheppard Mullin.  Respondent is Emachine Inc, Dubai, AE (“Respondent”) represented by Farad Fallah, of Emachine Inc.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <emachineinc.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Robert T. Pfeuffer, Senior District Judge, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 27, 2003; the Forum received a hard copy of the Complaint on May 27, 2003.

On May 28, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <emachineinc.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 June 11, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 2003 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@emachineinc.com by e-mail.

A timely Response was received and determined to be complete on July 1, 2003.  An untimely Response was received by the Forum dated July 1, 2003, consisting of six pages.  Although the Panel read the untimely Response and reviewed the exhibits attached thereto, it was not considered because of the untimely filing.

On July 7, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Robert T. Pfeuffer, Senior District Judge, as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1.  Complainant contends that the domain name in dispute was registered by the        Respondent and is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

2. It is further alleged that Respondent has no legal rights or legitimate interests in respect to the domain name and

3. The Complainant alleges that the domain name has been registered and is being used in bad faith.

The Complainant’s contentions are based on allegations that the mark EMACHINES was established by registration through the Office of United States Patent and TradeMark.  A certificate of registration is attached as the Complainant’s Exhibit B and supports this position.  Emachines, Inc., a Delaware corporation, is the holder of this registered trademark, also shown in Exhibit B.  It also contends that it is the holder of world-wide trademark, which it acquired by assignment from Korea Data Systems, America, Inc.  It further alleges that it has long been in the business of distribution and sale of high quality computer equipment and related products as well as providing technical services for the home PC and business markets.

The Complainant’s contention is further supported by an Internet search exhibit through www.yahoo.com, which reveals the existence of thousands of references to EMACHINES and its products. 

Complainant alleges that Respondent’s business name if Emachines, inc., but that its business has not been commonly known to the public by the domain name and that Respondent conducted no legitimate business under the trademark EMACHINES prior to the use by Complainant.  It is further contended that bad faith by Respondent is demonstrated by the use of Complainant’s trademark.  Respondent’s use of a domain name that is identical or confusingly similar to Complainant’s EMACHINES federally registered trademark, it is alleged, will and does create a likelihood of confusion for Internet users searching for Complainant’s website.

       

B. Respondent

Respondent has stated that the disputed domain name creates no confusion similar to EMACHINES mark because Respondent only conducts business in the Middle East while Complainant conducts its business in the United States.  Respondent has shown that it has rights to the disputed domain name through its registration of the emachine mark in the United Arab Emirates, and that the domain name is based on its company name and the availability of the disputed domain name.

Respondent further contends that Emachine was incorporated September 2, 2001, in Jebel, Ali Free Zone, Dubai, U.A.E. as a free zone establishment for the assembly of computers.  It further alleges that it is well known in the Middle East and North Africa and that it has registered the domain names emachine.com and emachine.ae.  Respondent alleges that since emachine is their registered trademark in the United Arab Emirates it should be enough for registering a “.com” domain name.  No confusion over the names can occur, it states, because they have never sold computers or peripheral equipment outside of the Middle East region and have never advertised that they do so.  It states it has no intention or interest on entering the U.S.A. market.

Respondent states it has never used Complainant’s trademark either in good faith or bad faith and that their website is totally different from Complainant’s.  Respondent urges that they believe in good service and that could not be achieved in a market thousands of miles away from their location, therefore, avoiding any problem with Complainant’s business.

FINDINGS

The Panel finds that each of the Complainant’s contentions, as set out in paragraphs 1, 2 and 3 above, are supported by the evidence and the Panel so finds.

DISCUSSION

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

The Complainant has established rights in EMACHINES mark through registration with the United States Patent and Trademark Office.  See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy Paragraph 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place).

It is further found that the <emachineinc.com> domain name is confusingly similar to Complainant’s mark.  See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).

Rights or Legitimate Interests

The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is using the <emachineinc.com> domain name to commercially capitalize on customers searching for Complainant’s website and inadvertently visits Respondent’s website.  See Kosmea Pty Ltd. V. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).

Registration and Use in Bad Faith

The Panel finds that the Respondent is using Complainant’s mark in bad faith to intentionally attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark.  In particular, Complainant’s Exhibit E is evidence of the Respondent’s attempt to utilize the Complainant’s mark by contacting one of Complainant’s suppliers.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy Paragraph 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that although a trademark involves words that could be generic in a different context, the reputation of that mark in the field where the mark is associated, means that the intentional registration and use of a misspelling of that mark manifests the intent to capitalize on the mark, and constitutes bad faith).

DECISION

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

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

Robert T. Pfeuffer, Panelist
Dated: July 21, 2003

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