WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gateway, Inc. v. Pixelera.com, Inc.

Case No. D2000-0109

 

1. The Parties

The complainant is Gateway, Inc., a Delaware corporation having a principal place of business at 610 Gateway Drive, North Sioux City, South Dakota 57049, United States of America.

The respondent is Pixelera.com, Inc., a Canadian company of 2630D Lancaster Road, Ottowa, Ontario, Canada K1B 4Z4. There is no dispute that the respondent changed its name to Pixelera.com, Inc. from Gateway Media Productions, Inc. and that this change was announced by press release dated January 31, 2000.

 

2. The Domain Name and Registrar

The domain name in contention is gate-way.com and the registrar is Network Solutions, Inc. of Herndon, Virginia, USA.

 

3. Procedural History

  1. The complaint was received by the WIPO Arbitration and Mediation Center ("the Center") on March 1, 2000, by email and on March 2, 2000, in hardcopy. The Center acknowledged receipt of the complaint on March 1, 2000, and that day sought registration details from the registrar.
  2. On March 1, 2000, the registrar, inter alia, confirmed that it is the registrar of the domain name gate-way.com, identified the current registrant as Gateway Media Productions Inc.and stated its "5.0 Service Agreement" is in effect.
  1. The Center confirmed that the registrarís 5.0 Service Agreement incorporates and requires the registrant to comply with the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted on October 26, 1999 by the Internet Corporation for Assigned Names and Numbers ("ICANN").
  2. The complainant paid the fee required by the Center.
  3. Having verified that the complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999, ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999, ("the Supplemental Rules"), on March 2, 2000, (by post/courier, email and fax, with copies to the complainant, the registrar and ICANN), the Center notified the Respondent and its registered technical and administrative contacts of the complaint and of the formal commencement on that day of an administrative proceeding under the Policy.
  4. The respondent submitted a response to the complaint within the prescribed time. It was received by the Center and acknowledged to the parties on March 21, 2000.
  5. On March 24, 2000, the Center appointed Mr. Alan L Limbury sole panelist and that day notified the parties of the appointment and of the projected decision date of April 6, 2000. Mr. Limbury submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence.
  6. The panel agrees with the Centerís assessment that the complaint complies with the Policy, the Rules and the Supplemental Rules and finds the complaint was properly notified to the respondent in accordance with paragraph 2(a) of the Rules.

 

4. Factual Background

The complainant is a direct seller of computers. It says it engages in this activity under the name and mark GATEWAY; that it has registered in the USA, Canada and elsewhere the trade marks GATEWAY and GATEWAY.COM; that it is the registrant of domain names which include GATEWAY.COM and GATEWAY.NET and that in 1999 it invested over $US200 million in advertising and promoting the GATEWAY marks and sold over 8 billion dollars worth of products and services under those marks.

Exhibit C to the complaint details "several" of the complainantís trade marks registered in the USA. None of them comprises the word GATEWAY alone. Those marks include GATEWAY.COM; GATEWAY 2000; GATEWAY COUNTRY; GATEWAY SOLO and GATEWAY MAGAZINE. However, the complainant does not say Exhibit C is exhaustive.

Since the respondent did not dispute that the complainant sells computers under the name and mark GATEWAY (saying it does not know), the Panel is prepared to proceed on the basis of the complainantís assertion.

The earliest US trade mark registration of which the complainant has supplied details is for GATEWAY 2000, on December 14, 1993. Its first use is recorded as having been on December 23, 1986. The registration is for computers and computer peripherals, in Class 9.

On March 13, 1997, the US trademark application in respect of the mark GATEWAY.COM (which had been filed on February 26, 1996) was assigned by a company known as gateway.com.inc to Gateway 2000, Inc., of 610 Gateway Drive, Sioux City, South Dakota, a Delaware company, which the Panel takes to be the complainant under a former name. That mark was registered in the USA on June 24, 1997, in respect of internet services.

In Canada (where the respondent is incorporated), the complainant registered the GATEWAY 2000 mark on April 15, 1994, in respect of personal computers, the first use in Canada being claimed as "since at least as early as 1 April 1987 on wares".

The many domain names registered by the complainant include GATEWAY.COM; GATEWAY.NET; GATEWAYONTHEWEB.NET; GATEWAY-WEB.COM and GATEWAY-WEB.NET.

The respondent, an "Ottowa based Internet development company" was incorporated in Canada in 1997 under the name Gateway Media Productions, Inc. Shortly afterwards, in May 1997, it registered the domain name gate-way.com.

As mentioned, the respondent changed its corporate name to Pixelera.com, Inc. in January 2000, "signaling the companyís focus on developing dynamic Web-based applications", part of its "rapid and continuing development of forms-based new media solutions" (January 31, 2000, press release). On February 17, 2000, the respondent offered to sell the disputed domain name to the complainant for "a reasonable amount". On February 22, 2000, it nominated the amount of $75,000 stating "we are seeking additional compensation beyond administrative fees" because "we believe that Gateway will benefit directly from the domain" and "we believe that this domain is an asset that has a particular value to Gateway". It further stated this to be a "reasonable price" because "we are well aware of the recent frenzy attached to buying and selling domain names".

 

5. Partiesí Contentions

  1. The complainant contends the domain name at in dispute, "gate-way.com" is virtually identical to, and likely to be confused with, the complainantís GATEWAY marks and domain names; that long after the complainantís adoption, use and registration of its GATEWAY marks, respondent registered the disputed domain name and adopted the trade name "Gateway Media Productions, Inc." without any prior rights or legitimate interest in the name GATEWAY; that it abandoned any subsequent rights or interest in the disputed domain name when it changed its corporate name to Pixelera.com, Inc. in January 2000; that since then it has maintained registration and used the disputed domain name in bad faith in violation of paragraph 4(a) of the Policy by seeking to sell it to the complainant for valuable consideration in excess of any reasonable out-of-pocket cost directly related to the domain name and that its actions show it is improperly trafficking in the disputed domain name.
  2. The respondent denies that the name gate-way.com is virtually identical to and likely to be confused with the complainantís GATEWAY marks and domain names. It contends that since registration of the domain name gate-way.com, a period of over two years, the respondent has never received correspondence from any individual seeking to correspond with the complainant. It contends the fact that it changed its corporate name does not automatically result in abandonment of any subsequent rights or interest in the domain name. It used the disputed domain name as a legitimate company identifier for over two years. Individuals seeking to correspond with the respondent continue to correspond with the disputed domain name and the respondent uses it as a "redirect" to its new website and to profile its work in progress. The respondent therefore has considerable interest in the disputed domain name, which can be used for other future legitimate business purposes and therefore has considerable value.

The respondent says its corporate name change was sparked because it has often been confused with "Information Gateway Services (http://igs.net)" and "Gateway to the Internet and Computer Sales (http://www.gate-way.net)".

It denies it has used and maintained the disputed domain name in bad faith by attempting to sell it to the complainant. It contends that as the disputed domain name continues to generate income for the respondent, the attempted sale is not determinative of this issue.

It denies the application of sub-paragraphs 4(b)(i) to (iv) of the Policy, saying it registered the disputed domain name because the word "Gate-way" has generic meaning and is widely used throughout the internet; the disputed domain name is distinct from the complainantís registered domain names and has not led to confusion with them; that no correspondence has been received from persons seeking to communicate with the complainant but that over 20 emails each day are received from individuals who have internet dial-up accounts through http://www.gate-way.net. It also says it has never attempted to nor advertised that it is in any way involved in selling or servicing computer hardware or components.

 

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:-

(i) the disputed name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

  1. the respondent has no rights or legitimate interests in respect of the domain name; and
  2. the disputed domain name has been registered and is being used in bad faith.

Confusing similarity

The complainant has satisfied this requirement. While the domain name gate-way.com is not identical to the complainantís trade marks GATEWAY or GATEWAY.COM, the only difference is the hyphen and this is insufficient to avoid confusing similarity. Evidence of lack of actual confusion is irrelevant since the test is confined to a consideration of the disputed domain name and the trademarks.

Rights in the domain name

The word "gateway" is a common descriptive word of general application, signifying a portal providing access to a place or thing. Where a trader uses a descriptive name as a trademark, only slight differences will suffice to distinguish another trader and its business from the first trader and its business. The complainant argues that, because the respondent adopted its corporate name long after the complainant registered its marks, the respondent had no legitimate interest in the corporate name. If this were so, it might follow (as the complainant argues) that, when the respondent registered the disputed domain name shortly thereafter, it likewise had no legitimate interest in the domain name.

The argument cannot be sustained, since the corporate name Gateway Media Productions, Inc. does not involve use, as a trademark, of the word Gateway, and the other words in the name are sufficient to distinguish the respondent from the complainant. The respondent, an internet development company, thus had a legitimate interest in adopting its corporate name. Registration shortly thereafter of the domain name "gate-way.com" affords a ground for concluding that the respondent had, at the time of registration of the disputed domain name, legitimate rights and interests in it. The respondent says it registered that domain name because the word "gate-way" has generic meaning and is widely used throughout the internet. There is no evidence to detract from this. The domain name was registered by the respondent prior to the registration of the complainantís trademark GATEWAY.COM in the USA.

There is no foundation for the contention that by changing its corporate name the respondent abandoned any rights it might have acquired in the disputed domain name. The respondent continues to generate income from it and uses it to redirect persons to its new website. There is no evidence of improper diversion of trade from the complainant.

In any event, paragraph 4(c)(i) of the Policy provides that rights or legitimate interests to a disputed domain name are demonstrated if the Panel finds it proved that, before any notice to the respondent of the dispute, the respondent used the domain name in connection with a bona fide offering of goods or services. The dispute was notified to the respondent in March 2000. The disputed name was used by the respondent since May 1997, in connection with the bona fide offering of internet development services.

Thus the complainant has failed to prove the respondent has no rights or legitimate interests in respect of the disputed domain name.

Bad faith

In light of the Panelís finding above, it is unnecessary to address this question.

 

7. Decision

For these reasons, the complaint is dismissed.

The registrar is not required to cancel or transfer the domain name gate-way.com.

 


 

Alan L. Limbury
Sole Panelist

Dated: April 6, 2000