WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gateway, Inc. v. Robert Ross

Case No. D2000-0767

 

1. The Parties

Complainant is Gateway, Inc., a corporation organized under the laws of the State of Delaware, U.S.A., located at 610 Gateway Drive, North Sioux City, South Dakota 57049, U.S.A. ("Complainant"). Respondent is Robert Ross, an individual residing in 407Ĺ Wilhelmia Avenue, Colorado Springs, Colorado 80904, U.S.A. Complainant is represented by counsel, Pattishall, McAuliffe, Newbury, Hilliard & Geraldson of Chicago, Illinois, U.S.A.

 

2. The Domain Name and Registrar

The domain name which is the subject of this proceeding is "gatewaypcs.com" owned by Robert Ross. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, USA.

 

3. Procedural History

On July 10, 2000 the Complainant submitted the complaint by e-mail to the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). On the same date, the Complainant sent or transmitted a copy of the complaint to the Registrar by courier/e-mail.

The hard copies of the complaint were received by the Center on July 12, 2000. On July 14, 2000, Network Solutions, Inc. confirmed the registration details.

On July 18, 2000, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplementary Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile and e-mail to the Respondent, the Internet Corporation for Assigned Names and Numbers (ICANN) and the Registrar.

On July 18, 2000, the Respondent contacted the Center and indicated that he did not contest this proceeding.

On August 8, 2000 the Center issued a formal Notice of Default to the Respondent. Between August 8, 2000 to August 23, 2000, there were several exchanges between the Center, the Complainant and the Respondent regarding a possible settlement of this matter. On August 23, 2000, the Complainant indicated it preferred a decision be rendered in this matter.

On October 9, 2000, the Center appointed Clark W. Lackert as the panel in this matter after submission of the Statement of Acceptance and Declaration of Impartiality and Independence. The case file was transmitted on October 9, 2000 to the panel.

 

4. Factual Background

Complainant is a leading direct seller of personal computers, known colloquially as "PCs," which it sells under the name and mark GATEWAY. For many years before it formally amended its corporate name, Complainant was commonly referred to simply as "Gateway."

Complainant owns and uses a family of GATEWAY marks for its PCs that includes but is not limited to GATEWAY, GATEWAY 2000, GATEWAY.COM and GATEWAY.NET ("the GATEWAY marks"). Many but not all of Complainantís GATEWAY marks are registered with government authorities in the United States and other countries. Under U.S. law, those registrations are "prima facie evidence of the validity of the registered mark and of the registration of the mark, 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." 15 U.S.C. ß 1115. (On June 24, 1999, and on February 11, 2000, Complainant filed the appropriate Change of Name Recordation Forms with the USPTO to reflect the change of its name from "Gateway, 2000, Inc." to "Gateway, Inc." for most, if not all, of the GATEWAY applications and registrations recited in this Complaint. Any continued reference in the USPTO database to Complainant under its former name is attributable to processing delays within the USPTO.)

Complainant also owns and has registered numerous domain names that contain its GATEWAY name and mark, which include but are not limited to GATEWAY.COM and GATEWAY.NET.

Complainantís GATEWAY marks and the goodwill symbolized thereby are exceedingly valuable corporate assets of Complainant. In 1999, alone, Complainant invested well over Two Hundred Million U.S. Dollars (US$200,000,000.00) in advertising and promoting the GATEWAY marks and sold well over Eight Billion U.S. Dollars (US$8,000,000,000.00) in products and services under its GATEWAY marks.

 

5. Partiesí Contentions

A. Complainant

As a demonstration of Complainantís rights, Complainant refers to the decision of Gateway Inc. v. James Cadieux (WIPO D2000-0198), a recent decision made in favor of Gateway, Inc., in accordance with the Policy, in relation to the domain names "pcgateway.com" and "pcgateway.net." In that case it was stated at pages 6-7 that "[t]he Panel accepts as true the Complaintís certified allegations that Complainant is a leading direct seller of personal computers; that it spends a great deal of money on advertising involving marks that include the word "gateway"; that it sells large quantities of computers and related products and services under marks that include the word "gateway"; and that it owns a number of registered marks which include the word "gateway" ... Accordingly, the Panel finds that Complainant has rights in the trademark GATEWAY sufficient to satisfy the requirements of Paragraphs 4.a.(i) and 4.b.(i) of the Policy."

The domain name at issue in this present case, "gatewaypcs.com", consists of Complainantís GATEWAY mark in combination with "pcs", the plural form of the commonly-used and commonly-understood abbreviation for "personal computer," which is Complainantís principal product. As such, it is likely to be confused with Complainant, and is confusingly similar to Complainantís GATEWAY trademarks and domain names, especially since Complainant owns the trademark "GATEWAY" and the domain name "gateway.com."

To demonstrate confusing similarity, Complainant refers to the Cadieux decision, where the Panel stated that "... the Complaint explains that the domain name Ďconsists of Complainantís GATEWAY mark in combination with the commonly-understood abbreviation for Ďpersonal computerí which is Complainantís principle [sic] productí ... the Panel therefore finds Complainantís explanation of confusing similarity to be persuasive."

Respondentís lack of rights in the disputed domain name and its bad faith in registering and using it are demonstrated by numerous facts. Long after Complainantís adoption, use and registration of its GATEWAY trademarks and domain names, Respondent began making unauthorized use of GATEWAY in connection with the sale of personal computer products. Respondent registered the disputed domain name "gatewaypcs.com" on May 11, 1999.

On clicking the "ENTER" button in the middle of the web page located at www.gatewaypcs.com, dated May 18, 1999, the user is redirected to the homepage of Westside PCs, located at www.westsidepc.com. Westside PCs is listed in the Network Solutions WHOIS database as the company where Respondent is employed. It is not affiliated with Complainant or licensed or otherwise authorized to use Complainantís GATEWAY name and mark.

In addition to using a domain name that is confusingly similar to Complainantís well-known GATEWAY name and marks, Respondent included the following as a header on the gatewayspcs.com website: "THE GATEWAY TO PCíS"

Further, at the same website, Respondent used a depiction of a cow featuring Complainantís distinctive "cow spots" design. Complainant has registered its cow-spot design mark with the United States Patent and Trademark Office, Registration Number 1,725,231. This design has been used by Complainant as a trademark for computers since 1991, and is featured on all the Complainantís outgoing letterhead, business cards, advertising and packaging.

On May 19, 1999, Complainantís counsel sent Respondent a cease-and-desist letter. On March 22, 2000, Complainant counsel again wrote (by letter and e-mail) to respondent and to Nick Touris, who was shown on the NSI WHOIS report as the Administrative Contact for this domain name.

In response, on March 30, 2000, Respondent disclaimed ownership of the subject name in a letter in which he represents that:

"We have tried numerous times to explain to you that we or any employee here does not own the gatewaypcs.com domain." (Sic, emphasis added.)

Further, the Respondent indicated that the actual owner of the domain name is the individual formerly listed as Administrative and Billing Contact, Nick Touris. Mr. Touris never responded to Complainantís e-mail.

Despite Respondentís contention that he has no ownership interest in the domain name and his promise on March 30 that he would contact NSI to have his name deleted from the WHOIS database in favor of Mr. Touris, this did not happen. The current records of NSI not only continue to indicate that Respondent is the registrant, they have been amended to delete all reference to Mr. Touris and indicate instead that Respondent is now also the Administrative Contact, the Technical Contact, the Zone Contact and the Billing Contact.

By using the domain name "gatewaypcs.com," the name and mark GATEWAY on the Web site and a cow-spots design, Respondent intentionally attempted to attract Internet users to the Westside PCs Web site for commercial gain, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of the Westside PCs Web site or the personal computers offered on that Web site. Under Paragraph 4(b)(iv) of the Policy, this conduct is evidence of the registration and use of a domain name in bad faith.

Moreover, even though Respondent does not currently have a Web site posted at "gatewaypcs.com," his continued ownership of that domain name and deceptive representations as to his ownership and control over that domain name are evidence the domain name is being used in bad faith. See, e.g., the decision in Case No. D2000-0003, Telstra Corp. Ltd. v. Nuclear Marshmallows. There, in paragraphs 7.8 Ė 7.12, the Panel concluded that the passive holding of a domain name under circumstances similar to those present here satisfies the requirement that the domain name "is being used in bad faith" by respondent. Accordingly, Respondentís actions constitute bad-faith registration and use in violation of Paragraph 4(a) of the Policy.

B. Respondent

Respondent has defaulted, has not contested these proceedings, and has offered to transfer the domain name to Complainant.

 

6. Discussion and Findings

Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the 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. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.

The Panel has reviewed the evidence submitted by the Complainant concerning ownership of the trademark GATEWAY and is satisfied that the Complainant has proven trademark rights in such term. Furthermore, the Panel finds that the domain name "gatewaypcs.com" is confusingly similar to the trademark in which the Complainant has rights.

The record does not show any legitimate non-commercial use or fair use by Respondent. The Panel hereby finds that Respondent has not shown any legitimate rights in the domain name.

Finally, the Panel needs to examine the issue of bad faith. The record has evidence of Respondentís bad faith under Policy 4(b)(iv) due to Respondentís use of Complainantís trademarks GATEWAY and Cow Spots Design on its website, as well as a deceptive link to Respondentís employerís website (www.westsidepc.com). Accordingly, the Panel finds that Complainant has met its burden of proof as to Policy 4(a)(iii) in that the domain name was registered and is being used in bad faith.

 

7. Decision

The Panel decides that the domain name "gatewaypcs.com" is identical or confusingly similar to the service mark of Complainant, that Respondent has no rights or legitimate interests in such domain name, and that the domain name in issue has been registered and is being used in bad faith.

The Panel hereby orders that the registration of the domain name "gatewayspcs.com" be transferred to Complainant.

 


 

Clark W. Lackert
Panelist

Dated: October 30, 2000