WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gateway, Inc. v. David Ayers

Case No. D2000-0106

 

1. The Parties

Complainant is Gateway, Inc., a corporation incorporated under the laws of the State of Delaware, with a principal place of business at 610 Gateway Drive, North Sioux City, South Dakota 57049, USA.

Respondent is an individual, David Ayers, whose address is 1112 South 15th Street, St. Joseph, Missouri 64503, USA.

 

2. The Domain Name(s) and Registrar(s)

This dispute concerns the domain name "gatewaypccountry.com".

The registrar with which the domain name is registered is:

Network Solutions
505 Huntmar Park Drive
Herndon, VA 20170

Phone: (703) 742-0400

 

3. Procedural History

The Complaint submitted by Gateway, Inc. was received by e-mail on February 29, 2000, and in hardcopy on March 1, 2000, by the WIPO Arbitration and Mediation Center (the "Center"). Payment of the required fee was made by Complainant to the Center.

On March 1, 2000, the Center sent to the Complainant an Acknowledgement of Receipt of the Complaint. On the same date, the Center sent to the Registrar a request for verification of registration data. On March 2, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that the domain name "gatewaypccountry.com" is registered in the Respondentís name.

The Center reviewed the Complaint and concluded that it satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Panel agrees with this conclusion.

Having verified the formal adequacy of the Complaint, the Center on March 2, 2000, sent to the Respondent, with a copy to the Complainant, a notification of this administrative proceeding together with a copy of the Complaint. This notification was sent by the methods required under paragraph 2(a) of the Rules. The formal date of the commencement of this administration proceeding is March 2, 2000.

No response to the Complaint was received by the Center.

On March 22, 2000, the Center sent to the Respondent a Notification of Respondentís Default.

On March 24, 2000, the Center sent an invitation to William L. Mathis to serve as a Panelist in this case, and on March 27, 2000, he executed and forwarded to the Center his Statement of Acceptance and Declaration of Impartiality and Independence.

The case file was forwarded to the Panel constituted by William L. Mathis on March 28, 2000.

On April 7, 2000, an Administrative Panel Communication was sent by the Center to both the Complainant and the Respondent by e-mail. It requested that a further statement be provided by the Complainant dealing with the interest of the Complainant in the trademarks and service marks relied upon in the Complaint. The Complainant was requested to provide the further statement by April 12, 2000. The Respondent was invited to submit by April 17, 2000, any comments on Complainantís further statement.

The Complainant forwarded the requested SUPPLMENTAL STATEMENT OF COMPLAINANT on April 12, 2000, by e-mail to the Panel and to the Respondent.

No comments from the Respondent have been received by the Panel pursuant to the invitation in its Administrative Panel Communication of April 7, 2000.

 

4. Factual Background

Complainant asserts that it owns and uses a family of GATEWAY marks of which some are registered in the United States Patent and Trademark Office. Annex F to the Complaint is said to include several of Complainantís registered marks.

Included in Annex F is a Certificate of Registration No. 2,173,818, issued by the United States Patent and Trademark Office and relating to the service mark GATEWAY COUNTRY for "retail stores featuring computers, computer software, computer peripherals, and demonstration of products relating thereto." Registration of the mark on the Principal Register took place on July 14, 1998. The registration document shows July 15, 1997, as the date of first use of the GATEWAY COUNTRY mark. The registrant is identified as Gateway 2000, Inc. (Delaware Corporation), 610 Gateway Drive, P.O. Box 2000, North Sioux City, SD.

The difference between the registrantís name appearing on the certificate of Registration No. 2,173,188 and the name of the Complainant in this administrative proceeding has been accounted for in the SUPPLEMENTANT STATEMENT OF COMPLAINANT. The corporation formally changed its name from "Gateway 2000, Inc." to "Gateway, Inc." on June 1, 1999, in a filing with the Delaware Secretary of State. Thus, the Complainant corporation is the same corporation which is identified as the registrant of the service mark GATEWAY COUNTRY in Reg. No. 2,173,818.

This explanation applies also with respect to the other mark registration documents in Annex F.

An additional registration identified in Annex F is Registration No. 2,073,740 relating to the mark GATEWAY.COM. The registration certificate is not included in Annex F, but a United States Patent and Trademark Office assignment record gives June 24, 1997, as the issue date for this registration. The assignment of the GATEWAY.COM to Gateway 2000, Inc. was dated March 13, 1997.

GATEWAY.COM also is included among a group of domain names which the Complaint says are "owned, used and registered by Complainant." This group is a large one. "GATEWAY" is a feature of all the names in the group. GATEWAYCOUNTRY.COM is included in the group.

Complainantís use of GATEWAY COUNTRY on stores is illustrated by three photographs which constitute annexes to the Complaint. Each shows the entry portion of a store building of substantial size with GATEWAY COUNTRY displayed prominently on the face of the building at a level above the entryway itself. It is clear that, in these instances, the designation GATEWAY COUNTRY is serving to identify the stores and retailing operations carried out in them.

This illustrated usage of GATEWAY COUNTRY is said to be representative of many similar situations. The Complainant alleges that it is a leading direct seller of computers, which it sells through a nationwide chain of retail stores that it operates under the name and mark GATEWAY COUNTRY.

Confirmation of the Complainantís use of GATEWAY COUNTRY to designate Complainantís stores is provided by a statement in an eBay auction display relating to the domain name in dispute in this proceeding. A copy of the display is attached to the Complaint as Annex H. It relates to an auction that started on December 22, 1999, and contains the sentence "Gateway has opened a New line of stores called Gateway Country."

The March 2, 2000, report to the Center by the Registrar (Network Solutions) of the domain name in dispute in this proceeding shows that the Registrarís record pertaining to the domain name was created on December 21, 1999. This substantiates the Complaintís allegation that Respondent registered the domain name "gatewaypccountry.com" on December 21, 1999.

Annex I to the Complaint illustrates what a visitor to the web site identified by the domain name sees on his computer monitor. The home page includes "Contact Information" for the Respondent David Ayers, a few blocks of text matter and a link called "Gateway to Prime Critter Country". As explain in the Complaint, clicking on this link takes the visitor to a site that deals with products in different categories, "Gateway Pc Country" is displayed at the top of the page; there is a "Welcome to my Storefront" passage; and then there is a series of small product displays related to products which the visitor is invited to buy online. An e-commerce supplier such as "eToys", amazon.com", "outpost.com" or "Barnes&Noble", is identified with respect to each product.

The products displayed in Annex I seem to be for children. All but two of these products have names that include the word "Farm". The descriptions for the two exceptions include the word "farm".

 

5. Partiesí Contentions

A. Complainant

The Complainantís contentions may be summarized as follows:

(a) The domain name in dispute is an confusingly similar to a trademark or service mark in which Complainant has rights;

(b) Respondent has no rights or legitimate interests in respect to the domain name; and

(c) The domain name was registered and is being used in bad faith.

B. Respondent

The Respondent has not appeared or otherwise participated in this administrative proceeding. Hence, no contentions were advanced by the Respondent.

 

6. Discussion and Findings

A. Complainantís Rights in Marks

The Panel accepts as true the Complaintís certified and unchallenged allegations that Complainant is a leading direct seller of computers; that its computers are sold through a well known, rapidly growing, nationwide chain of retail stores which Complainant operates under the name and mark GATEWAY COUNTRY; and that it owns a family of GATEWAY marks, some of which have been registered with the United States Patent and Trademark Office.

Of particular importance in this proceeding is the Certificate of Registration, Principal Register, pertaining to Reg. No. 2,173,818, on GATEWAY COUNTRY. The legal effect associated with this Certificate of Registration is spelled out in Section 1115 of Title 15, United States Code. It constitutes "prima facie evidence of the validity of the registered markÖ of the registrantís ownership of the mark, and of the registrantís exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration."

B. Confusing Similarity

In support of its contention that the domain name in dispute is confusingly similar to a mark in which Complainant has rights, the Complainant explains that the domain name blends an abbreviation referring to Complainantís main product with features of Complainantís registered marks.

This plausible explanation is confirmed by the style of presentation which the record shows to have been used by the Respondent. Both the eBay auction display (annex H) and the "storefront" accessed through use of the domain name (Annex I) employ styles which visually separate "pc" from the words "gateway" and "country". One presentation is "Gateway PC Country". The other is "Gateway Pc Country".

Of course, the addition of ".com" is a commonplace occurrence when a mark owner seeks to reflect the good will of a mark in a corresponding domain name. As such, the addition of ".com" accomplishes little if anything toward the avoidance of confusing similarity.

The Panel finds that the contested domain name is confusingly similar to Complainantís GATEWAY COUNTRY.

Respondentís eBay presentation in support of an attempt to sell the domain name emphasizes the confusing similarity. It says:

"Gateway has opened a New line of stores called Gateway Country. Well if you are looking for that special name to carry your new Computer business into the new Millennium, here it isÖ Gateway PC CountryÖ the Best Place to Buy a PC!"

C. The Issue of Bad Faith in Registration and Use of Domain Name

Section 4.b. of the Uniform Domain Name Dispute Resolution Policy under which this administrative proceeding is taking place provides some bases for dealing with the issue of bad faith. It describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. Four descriptions are presented in passages (i), (ii), (iii) and (iv). They are presented in the alternative. That is, a finding of the existence of the circumstances in any one of the four descriptions will qualify such circumstances as evidence of the required bad faith.

Passage 4.b.(i) describes circumstances of particular pertinence to this case:

"(i) circumstances indicating that Ö [Respondent] Ö registered Ö the domain name primarily for the purpose of selling Ö the domain name registration to the complainant Ö or to a competitor of Ö complainant, for a valuable consideration in excess of Ö documented out-of-pocket costs directly related to the domain name."

Respondent registered the domain name "gatewaypccountry.com" on one day and initiated an eBay auction on the next day to sell it. This is compelling evidence that the registration was obtained primarily for the purpose of selling the domain name, and the Panel so finds.

The record here also includes evidence that the Complainant or its competitors were targeted as potential buyers. The Complaint alleges that, on the same day the domain was registered, "Respondent contacted Complainant to indicate public confusion between his site and Complainantís stores." Such a contact would alert Gateway to the existence of the new domain name and to potentials for its use in a manner injurious to Gateway.

Moreover, it is logical to consider the contact in the context of the eBay auction of the domain name beginning the next day.

The Complainant and its competitors were not excluded from the bidding process. The text passage quoted above from the eBay auction display focuses the attention of the reader on the similarity between the "Gateway Country" store name and "Gateway PC Country", in the context of computer businesses. The obvious targets for such a message are the Complainant and its competitors.

The Panel finds that Respondentís offering of this domain name for sale to all constituted an attempt to sell to Complainant or its competitors. The Panel also finds that in the context of the evidence of record here, the logical targets of the eBay offering were Complainant and its competitors.

The minimum bid request for the auction was $5,000.00. The Complainant has registered many domain names and is in a position to know the order of magnitude of the costs involved. Complainant alleges that "Ö the domain name was registered Ö for the purpose of selling Ö it Ö for valuable consideration in excess of Respondentís out of pocket costs directly related to the domain name."

This allegation is accepted by the Panel. The registration event and the attempted sale took place at about the same time. It is not believable that Respondent was attempting to lose money. Accordingly, the Panel finds that Respondentís purpose was to sell for a consideration in excess of his out-of-pocket costs directly related to the domain name.

These findings taken together require a further finding that the circumstances described in Section 4.b.(i) of the Policy exist, so that such circumstances constitute evidence of the registration and use of the domain name in bad faith. There is no contradictory evidence in the record.

Additionally, attention has been given to Section 4.b(iv) of the Policy in connection with Respondentís ongoing use of the domain name with relation to its web site "storefront" referred to above. See Complaint paragraph 12.(f)(ii) and Annex I. Respondentís use of a domain name which is confusingly similar to Complainantís GATEWAY COUNTRY mark and store name tends to attract to Respondentís web site persons who are familiar with Complainantís stores and products. There they find the home page reference to "Computer Supplies" and "software". These are goods that fall into the product categories sold in Complainantís stores.

Considering these facts in light of the auction evidence discussed above, the Panel finds that Respondentís ongoing use of the domain name has been an intentional attempt to attract internet users to his site by creating a likelihood of confusion with Complainantís mark. This attempt had been made in the context of a program which seeks to gain a monetary benefit rather than some other sort of endeavor that might be considered non-commercial or personal in nature or effect. The type of confusion sought to be created was confusion that would lead internet users to assume that there is some kind of association between Complainant or its stores and the Respondentís web site or products offered there. That is, the Respondent attempted to create a likelihood of confusion "as to the source, sponsorship, affiliation or endorsement" of his web site or products.

D. The Issue of Whether Respondent Has Rights or Legitimate Interests

Section 4.c. of the Policy describes some circumstances which, if found to be proved, will demonstrate that a respondent has rights or legitimate interests in respect of a domain name. The Panel finds that none of the described circumstances has been established by the evidence in the record of this case.

The evidence here does not tend to prove that Respondent made use or preparations for use of "gatewaypccountry" or "gatewaypccountry.com" before he became aware of Respondentís GATEWAY COUNTRY and the obvious confusing similarity between the two. To the contrary, arriving at the term "gatewaypccountry" without prior knowledge of the use of GATEWAY COUNTRY in connection with the marketing of "pc" equipment would be most improbable.

Similarly, there is no real probability that the Respondent, David Ayers, or his business was commonly known by such a long and visually complex name as "gatewaypccountry".

Finally, neither Respondentís attempts to sell the name nor Respondentís use of the name in connection with his web site "storefront" is of a nature such that it could be considered noncommercial or fair use without intent for commercial gain.

 

7. Decision

For these reasons, the Panel decides that the domain name in dispute is confusingly similar to a mark in which the Complainant has rights, and that the respondent does not have rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.

Accordingly, the Panel requires that the registration of the domain name "gatewaypccountry.com" be transferred to the Complainant.

 


 

William L. Mathis
Panelist

Dated: April 27, 2000