WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cabletron Systems, Inc. v. DSL Enterprises
Case No. D2000-0571
1. The Parties
The Complainant is Cabletron Systems, Inc. ("Cabletron Systems"), a corporation organized under the laws of the State of Delaware, USA, having its principal place of business in Rochester, New Hampshire, USA.
Respondent is DLS Enterprises located in Murphy, North Carolina, USA.
2. The Domain Name and Registrar
The domain name at issue is "cabletronsystems.com" (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") whose address is 505 Huntmar Park Drive, Herndon, Virginia, USA
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant via email on June 7, 2000, and in hardcopy on June 13, 2000. The Complainant paid the required fee.
On June 9, 2000, the Center sent to the Registrar a request for verification of registration data.
On June 9, 2000, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.
On June 9, 2000, the Center verified that the Complaint 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").
On June 15, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On June 22, 2000, the Center received a Response and sent an Acknowledgment of Receipt of the Response.
On August 4, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.
4. Factual Background
The Complainant has been using the CABLETRON SYSTEMS mark to provide networking product solutions and services since 1983. The Complainant first registered the CABLETRON SYSTEMS mark in the United States in 1993 and has obtained a number of registrations for the CABLETRON SYSTEMS mark in the United States and throughout the world.
The registrations for Complainant’s trademarks in the United States are as follows:
International Class (goods/services):
9 (computer software)
9 (computer networking products)
37 and 42 (computer services)
Complainant also holds registered trademarks in CABLETRON SYSTEMS and CABLETRON in the following countries: Albania, Algeria, Argentina, Australia, Austria, Bahrain, Belgium, Belize, Benelux, Bophuthatswana, Botswana, Brazil, Brunei, Bulgaria, Canada, Chile, China, Colombia, Costa Rica, Croatia, Cyprus, Czech Republic, Denmark, Dominican Republic, Ecuador, Egypt, El Salvador, Estonia, European Community, Finland, France, Georgia, Germany, Greece, Guatemala, Honduras, Hong Kong, Hungary, Iceland, Indonesia, Iran, Republic of Ireland, Israel, Italy, Jamaica, Japan, Jordan, Kuwait, Latvia, Lithuania, Macau, Malta, Mexico, Morocco, Namibia, New Zealand, Nicaragua, Norway, Panama, Peru, Philippines, Poland, Portugal, Puerto Rico, Romania, Russian Federation, Saudi Arabia, Singapore, Slovak Republic, Slovenia, South Africa, South Korea, Spain, Swaziland, Sweden, Switzerland, Taiwan, Tangier, Thailand, Transkei, Tunisia, Turkey, United Arab Emirates, United Kingdom, Uruguay, and Venezuela.
The Complainant owns and operates under the domain name "cabletron.com".
Complainant is a well-known provider of world-class networking solutions. With scalable products designed for Global 1000 enterprise networks, service providers, and small businesses, Complainant is the e-business communications specialist in the Internet economy. The Complainant’s products and services are used by leading Internet Service Providers, leading e-business retailers, government organizations, and thousands of enterprise, healthcare, manufacturing, and financial customers around the world. The Complainant also supports a global network of Synergy Plus authorized distributors and resellers who deliver award-winning technology and services in their regional markets. Complainant is publicly traded on the New York Stock Exchange. As of February 29, 2000, net income for the fiscal year 2000 on a pro forma basis was about $69.9 million, net sales were over $1.4 billion, and assets totaled over $3.1 billion.
On May 16, 2000, the home page of the website www.cabletronsystems.com indicated that the site was "Temporarily Unavailable" and encouraged Internet users to "try back again soon!" Until about May 13, 2000, the Respondent maintained an operational site on the World Wide Web using the Internet address www.cabletronsystems.com. The textual heading of the www.cabletronsystems.com website identified itself as "GOD." The home page of www.cabletronsystems.com displayed three bouquets of roses and an advertisement for "DREAMHOST WEB HOSTING." The advertisement for "DREAMHOST WEB HOSTING" provided a direct link to the website "dreamhost.com".
In July 1999, the Respondent registered the domain name "cabletronsystems.com". There is no indication that the Respondent ever used "cabletronsystems" as its company name. Nor is there any indication that the Respondent was commonly known as "cabletronsystems" prior to its registration of that domain name.
There is no evidence that the Respondent has any trademark or other rights in the mark CABLETRON SYSTEMS. Complainant’s counsel asked the Respondent to cease and desist from use of the "cabletronsystems.com" domain name. An individual who identified himself as Ron Savoy responded, stating "I made cabletron [sic] aware I had the site as a courtesy, and even today I got a piece of mail for them." On April 8, 2000, Mr. Savoy said that he had previously indicated he would give up the domain name "if it would not cost me any money!" On April 10, 2000, the Complainant’s counsel stated that the Complainant was willing to provide the necessary forms to transfer ownership of the domain name and to reimburse Mr. Savoy for his out-of-pocket registration costs up to $250. Mr. Savoy responded that day, stating: "This is fine as long as you cover all costs. Make check out to DLS enterprises and NOT Ron Savoy. You have all the necessary information from my who is information to send me mail. Just make sure I dont [sic] have to sign for and [sic] mail from the post office!" The Complainant’s counsel responded that it would send the reimbursement check for registration costs once it received a signed transfer form from Mr. Savoy. Mr. Savoy, responding as "Christopher Columbus," said, "A check will need to be issued before I sign anything."
The Respondent also registered the domain name "putnam-investments.com" in May 1999. This site is not currently operational. The message "page cannot be displayed" appears when attempting to access the website. Putnam Fiduciary Trust had registered the domain name "putnaminvestments.com" in March 1998, over a year earlier. Putnam Fiduciary Trust owns, among other registrations, a United States trademark for PUTNAM ONTRACK. There is no evidence that the Respondent has any trademark or other rights in the mark PUTNAM INVESTMENTS.
Respondent has filed the following email as his Response to the allegation of the Complaint:
I bought cabletronsystems over 1 year ago, i had no problems registering the domain name. if someone else wanted it they should have bought it. I bought it and i did nothing but put up a one page web site until I found furthur use for it. I informed cabletron as a curtesy that I was getting some of there e-mail. otherwise they would have never known i had the site. it was not a competitive site, and it was not even in use, just a basic page that i used just to have something there, this was not defamatory, or driving away their business. i was contacted by some lawyer in manchester NH, and they told me they were going to sue me for this and I explain to they what i am stating now, i have done nothiung wrong. I was then contacted by palmer dodge antoher lawyer in boston massachusetts and re-explained the issue again and told them that if they wanted to have this name back that i wanted ot be reimbursed for my expenses which are not very much fo rthe site and they said they would give me 250$ and i told them this was fine but I was not going to sign for any documentation at the post office. The reason for this is i am allowed to keep my anonimity private, I do not live in North carolina and Ron Savoy and Christopher Columbus are obviously not my real names. I also but up default informaiton as in no valid e-mail address or no phone # when I register my domain names, I was allowed to. I have no problem giving them the domain name but i do still feel I should be reimbursed for my expenses. That is only fair, I would maybe disagree if I did something wrong with the domain name but that is not the case.
thanks you for you time
5. Parties’ Contentions
A. Complainant contends that it has United States and international registered trademarks in CABLETRON SYSTEMS and that the Domain Name is identical with and confusingly similar to the CABLETRON SYSTEMS mark pursuant to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent does not contest Complainant’s assertions of trademark rights or that the Domain Name is identical with or confusingly similar to the CABLETRON SYSTEMS mark.
Respondent contends that it does have rights or legitimate interest in the Domain Name.
Respondent contends that its registration and use of the Domain Name is not in bad faith.
6. Discussion and Findings
Identity or Confusing Similarity
The only difference between the CABLETRON SYSTEMS mark and the Domain Name "cabletronsystems.com" is the addition of a space between the two elements that comprise the Complainant’s mark. The addition of a space is inconsequential and does not prevent a finding that the names are identical or at least confusingly similar. See Christian Dior Couture SA v. Liage International Inc., WIPO Case No. D2000-0098, § 7.B.1 at 4; Reef Industries, Inc. v. Moose Lake Products Company, Inc., WIPO Case No. D2000-0041, § 6.B at 4; Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037, § 6.3 at 4; The Hamlet Group, Inc. v. James Lansford, WIPO Case No. D2000-0073, § 6 at 4; Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010, § 6 at 5.
Therefore, the Sole Panelist finds that Complainant has rights in the trademark CABLETRON SYSTEMS and that the Domain Name is identical with or confusingly similar to the CABLETRON SYSTEMS mark pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest.
The Policy paragraph 4(c) allows three methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Names:
(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.
Respondent is not a licensee of the Complainant, nor is he otherwise authorized to use the Complainant’s mark. Respondent has offered no evidence that he has offered any good or services using the Domain Name. Respondent offers no evidence that he uses "cabletronsystems" as his business name; and there is no evidence that he did so prior to his registration and use of "cabletronsystems.com". Respondent alleges no legitimate noncommercial or fair use of the Domain Name.
Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
The Policy paragraph 4(b) sets forth four criteria for bad faith registration and use of domain names:
(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.
The Sole Panelist finds that Respondent has engaged in activities meeting each of the criteria under the Policy paragraphs 4(b)(ii) for bad faith:
(ii) Respondent had actual knowledge prior to registration of the Domain Name of the existence of Complainant’s mark because he initiated contact with Complainant. In addition, Respondent had constructive knowledge of the Complainant’s mark because of its registration. See, Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059. Respondent has also registered other well-known marks as in the case of "Putnam-investments.com". Therefore, the Respondent has engaged in a pattern of registrations which prevents the owners of the trademarks or service marks from reflecting their marks in a corresponding domain name.
The criteria listed in the Policy paragraph 4(b) are not the exclusive means of proving bad faith. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003.
Respondent provided a false telephone number , false e-mail address and false identities to Complainant and to the Registrar. Such actions have been deemed to be acts of bad faith. See 3636275 Canada, dba eResolution v. eResolution.com, ICANN Case No. D2000-0110, § 6 at 7 (finding bad faith where Respondent was an unidentified business entity and person responding to Complainant’s cease and desist request did not provide street address and gave means of communication and contact that were "unusual and even questionable for someone conducting a legitimate business"); Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138, § 6.C at 3 (registration of false name indicates bad faith).
Therefore, the Sole Panelist finds that Respondent has registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).
The Sole Panelist concludes (a) that the domain name "cabletronsystems.com" is identical with and confusingly similar to the trademark CABLETRON SYSTEMS, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Cabletron Systems, Inc.
Richard W. Page
Dated: August 18, 2000