WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atmel Corporation v. Entredomains, Inc.
Case No. D2000-0775
1. The Parties
The Complainant is Atmel Corporation ("Atmel"), a California corporation with headquarters in San Jose, California.
The named Respondent is Entredomains, Inc. ("Entredomains"), a corporation with a business address of 8635 W. Sahara, Las Vegas, Nevada.
2. The Domain Name And Registrar
The domain name at issue is "atmelgrenoble.com". Its registrar is Network Solutions, Inc. ("NSI") of Herndon, Virginia, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received Atmelís Complaint electronically on July 12, 2000, and in hard copy form on July 13, 2000. The Center has 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"). Atmel has made the required payment to the Center. The formal date of the commencement of this administrative proceeding is July 25, 2000.
On July 18, 2000, a request for a registrar verification was submitted to NSI requesting it to: (1) confirm that a copy of the Complaint was sent to it by Complainant; (2) confirm that the domain name "atmelgrenoble.com" is registered with NSI; (3) confirm that the person identified as Respondent is the current registrant of the domain name; (4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es) available and a registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that the policy applies to the domain name(s); and (6) confirm the current status of the domain name.
On July 21, 2000, NSI delivered its verification response by e-mail indicating that the domain name "entregrenoble.com" is registered with NSI, that Entredomains was listed as the administrative contact, and that Entredomainsí address was listed as the Registrantís address beneath the sentence "THE DOMAIN NAME YOU HAVE ENTERED IS FOR SALE." The registrar also confirmed that NSIís 5.0 Service Agreement was in effect and that the domain name registration "atmelgrenoble.com" is in "Active" status
On July 24, 2000, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN) setting a deadline of August 13, 2000, for Respondent to make a response to the Complaint. The Commencement Notification was also transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís WHOIS confirmation. In addition, the Commencement Notification was sent by express courier and transmitted by facsimile to the addresses listed in the Complaint and confirmed by NSI. The Commencement Notification was also transmitted to Entredomains as the administrative contact, by e-mail to the e-mail addresses indicated in the Complaint and specified in NSIís WHOIS confirmation. In addition, the Commencement Notification was sent by express courier and transmitted by facsimile to the administrative contact at the addresses listed in the Complaint and confirmed by NSI.
On July 12, 2000, the Center received a response in electronic form from a "B Evans" at "firstname.lastname@example.org". The response failed to include any certification that the information contained within the response was accurate and complete in accordance with the Rules, Paragraph 5.
No further submissions were made on behalf of Respondent before the deadline for submitting responses expired on August 13, 2000.
Having received no response in compliance with the requirements prescribed in The Rules, Paragraph 5 and the Supplemental Rules, using the same contact details and methods as were used for the Commencement Notification, the Center transmitted to the parties a Notification of Respondent Default on August 23, 2000.
One week later, on September 1, 2000, the Center received an e-mail from "Burkedude25@aol.com", who purported to be the owner of the domain name at issue. This e-mail failed to provide any name, telephone or telefax number of the purported domain name holder and, like the July 12, 2000, e-mail response, failed to certify that the information contained in the e-mail was accurate and complete in compliance with the Rules, Paragraph 5.
On September 5, 2000, in view of the Complainantís designation of a sole panelist, the Center invited this Panelist to serve as the panelist for this case. On the same day, the Panelist submitted her Statement of Acceptance and Declaration of Impartiality and Independence. The Center then transmitted to the parties a Notification of Appointment of Administrative Panel with a Projected Decision Date. The Panelist finds that the administrative panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
4. Factual Background
The allegations and evidence submitted by Complainant show as follows:
Complainant is a San Jose, California company, founded in 1984, which designs, manufactures and markets advanced semiconductors on a worldwide basis. Complainant has principal manufacturing facilities in Colorado Springs, Colorado, in Nantes and Roussette, France and in Heilbronn, Germany. Complainant has registered the following marks in connection with the operation of its business:
Trademark - ATMEL for "semiconductor integrated circuits" registered on February 28, 1989, with the United States Patent and Trademark Office;
Trademark and Design - ATMEL for "semiconductor integrated circuits and prerecorded computer programs on storage media for programming of integrated circuits" registered on December 24, 1996, with the United States Patent and Trademark Office.
Complainant has been using the ATMEL mark to promote its goods and services since August of 1985 and has used the ATMEL mark and design to promote goods and services since December of 1991. As a result, it is alleged that Complainant has developed substantial fame in its ATMEL trademarks and design marks over the past 15 years.
On December 20, 1999, Complainant announced its plans to acquire an entity called Thompson-CSF Semiconducteurs Specifique ("TCS"), which was a semiconductor company based in France, not far from the City of Grenoble. On May 25, 2000, at 8:19 a.m., Complainant issued a press release announcing that it had finalized the acquisition of TCS, and that it would rename the acquired entity "ATMEL GRENOBLE." On that same day, the domain name "atmelgrenoble.com" was registered under respondentís address. At approximately 1:40 p.m. that day, Complainant received an e-mail from "Burkedude25@aol.com" indicating that the domain name "atmelgrenoble.com" was available for sale.
According to the Complaint, until recently, the "atmelgrenoble.com" website included a statement that the domain name "atmelgrenoble.com" was for sale. The "atmelgrenoble.com" website currently contains no content.
5. The Parties Contentions
A. Complainant alleges that Respondent has registered a domain name which is identical or confusingly similar to a mark registered and used by Complainant; that Respondent appears to have no rights or legitimate interest in respect to the domain name at issue, and that Respondent appears to have registered and used the domain name at issue in bad faith.
B. Although Respondent has not submitted a response in strict compliance with the Rules, paragraph 5, the record does contain some indication of Respondentís position as set forth in two e-mail transmissions sent to the Center. On July 12, 2000, the Center received an e-mail from a "B. Evans" at "email@example.com" indicating that Respondent did not own the domain name at issue, but rather, had registered the domain name on behalf of "a client in Utah who has a company in development by this same name." The e-mail further stated that the domain name at issue "belongs to two people, Steve F. Atmel and Gretchen Noble." On September 1, 2000, the Center received an e-mail from "Burkedude25@aol.com", claiming that he or she was the owner of the domain name at issue. "Burkedude25@aol.com" claimed he/she had received notice of "a complaint against [him/her] for the domain name [he/she] had an Internet service register on [his/her] behalf." "Burkedude25@aol.com" further claimed while he or she had been doing business under the name Atmel Grenoble for six years, the domain name was registered for a "newly forming website."
In sum, Respondent appears to claim that it has legitimate interests in the domain name at issue insofar as it has merely registered the domain name, in good faith, on behalf of a business who, prior to this dispute, had used the name Atmel Grenoble in connection with a bona fide offering of goods and services.
6. Discussion And Findings
A. Applicable Rules and Principles of Law
Under paragraph 15(a) of the Rules, "a panel shall 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." By the combined operation of paragraphs 5(e) and 14(b) of the Rules, respondentís failure to respond does not automatically subject it to an adverse decision akin to a default judgment; rather, the Panel in such cases must "decide the dispute based upon the Complaint," and may only draw such inferences from the Respondentís default "as it considers appropriate."
Pursuant to paragraph 4(a) of the Policy, in order to prevail, Complainant must prove each of the following elements:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no legitimate interest in respect to the domain name; and
(iii) that the domain name has been registered and used in bad faith.
B. Consideration of Non-Conforming E-Mails
The Rules, Paragraph 5(e) provide that if a Respondent does not submit a Response in conformity with the Rules, the Panelist shall decide the dispute based upon the Complaint. However, the Rules, Paragraph 10, also provide that the Panelist should ensure that each Party be given a fair opportunity to present its case and vests the Panel with the power to determine the admissibility, materiality and weight of the evidence. With these principles in mind, this Panelist will consider the two e-mail Responses it received in this matter, although neither strictly meets the requirements for Responses set forth in the Rules. The relevance, materiality and weight given these Responses are discussed below.
C. Application of Paragraph 4(a) to the Facts
1. Identical or Confusingly Similar
Whether the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights does not require complex analysis under the circumstances of this case. The domain name incorporates the term ATMEL, which is a protected mark of the Complainant. According to the Complaint, Complainant enjoys a worldwide reputation and its use and filing of the mark predates the registration of the domain name by fifteen years. The fact that the domain name couples the term "grenoble" with Complainantís mark does not render the domain name sufficiently distinguishable so as not to be "confusingly similar" to Complainantís mark. Persons encountering the "atmelgrenoble.com" website would likely perceive the registrant of the domain name as an affiliate of the Complainant, particularly where the domain name mirrors the name of the company Complainant recently acquired near Grenoble, France. The Panelist finds, therefore, that the disputed domain name is identical or confusingly similar to the mark registered by the Complainant.
2. Legitimate Interest
Paragraph 4(c) of the Policy sets forth circumstances which, in particular but without limitation, if found by the Panelist, demonstrate the Respondentís rights or legitimate interests in respect of the domain name at issue. Such circumstances include the following:
(i) before any notice to you of the dispute, your use of, demonstrable preparation 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 organizations) 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 non-commercial 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.
The evidence in the record falls short of the criteria sufficient to demonstrate a registrantís rights or legitimate interests in a domain name. First, Respondent has not produced any evidence that, before receiving notice of the dispute, it used or prepared to use the domain name in connection with a bona fide offering of goods or services. Respondentís conclusory assertion in an unsworn, uncertified e-mail message that the domain name was registered on behalf of a client who has a company "in development" of the same name is not evidence. "Burkedude25@aol.com" alleges that he or she had done business under the name "atmelgrenoble" for six years, had stationery using that name, and filed an application for registration of the domain name as a trademark. However, Respondent has not provided a copy of any registration statement or contract, any certificates of incorporation, any company stationery, any copies of its trademark application or other similar documentary evidence, at least some of which should be available to Respondent, to show use or an intent to use the domain name for a legitimate purpose. Indeed, Respondent does not provide any information or documents whatsoever concerning its business that could shed light on the nature of its business, its date of inception or even its name. The only indication in the record of actual use of the domain name is advertising the domain name for sale.
Secondly, Respondent offers no persuasive evidence that as a business or as an individual, it has been commonly known by the domain name. Neither of responses considered by this Panelist from "B. Evans" or "Burkedude25@aol.com" would suggest that Respondent has been commonly known by the domain name "atmelgrenoble." Indeed, the e-mail addresses themselves would suggest otherwise. While Respondent claims that the domain name belongs to "Steve F. Atmel and Gretchen Noble," who have a company "in development" by that name, the second unsigned email from "Burkedude25@aol.com", who purports to be the owner of the domain name, contains no reference to either Steve F. Atmel and Gretchen Noble and asserts the domain name is for use in a business that has been in existence for "six years." Thus, Respondentís allegations are not only unsupported, but contradictory.
Finally, it is apparent that Respondent has not made legitimate noncommercial or fair use of the domain name. Respondent has not been licensed, permitted or given consent to use Complainantís mark in any context. Respondentís only use of the "atmelgrenoble.com" website, as noted above, was to advertise the domain name at issue for sale and, since the removal of this advertisement, Respondent has made no apparent use of the website at all. Moreover, the fact that Respondent registered the domain name on the very day Complainant first announced "Atmel Grenoble" as the name of its newly acquired entity further suggests an intent to mislead consumers. Respondent has not offered any explanation for this sequence of events.
In sum, the Panelist finds that Respondent has no legitimate interest in respect of the domain name.
D. Registered and Used in Bad Faith
Paragraph 4(b)(iii) and (iv) of the Policy recites circumstances which constitute evidence of the registration and use of a domain name in bad faith:
(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 owner of the trademark or service mark or to a competitor of the Complainant for the 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 and 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 website or other on-line location by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The record contains evidence of bad faith registration and use of the domain name. Within hours after the domain name was registered, Complainant received an e-mail from "Burkedude25@aol.com", purporting to be in response to an inquiry from "someone" at Complainant, advising Complainant that the domain name was for sale. Whether this Panelist believes that the e-mail from "Burkedude25@aol.com" was or was not unsolicited, the mere offer to sell the domain name, given its timing, is sufficient to support an inference that the acquisition of the domain name was primarily for the purpose of selling it.
Even the manner in which the domain name was registered bespeaks bad faith. The domain name was registered under Respondentís address beneath the sentence "THE DOMAIN NAME YOU HAVE ENTERED IS FOR SALE," a statement which plainly reveals the true motive behind the registration of the domain name. The Panelist further notes the Respondent had made similar registrations of domain names that include the names of other well known companies 1. Respondentís unsupported allegations that it had merely registered these domain names on behalf of others does not insulate it from the operation of the Rules - particularly where Respondent remains listed as the registrant.
Having considered this case in accordance with Paragraph 15 of the Rules, the Panelist finds that the disputed domain name is identical or confusingly similar to the mark in which Complainant has rights; that Respondent has no rights or legitimate interest in respect to the domain name; and that Respondentís domain name was registered and is being used in bad faith. Accordingly, it is hereby ordered that the domain name "atmelgrenoble" be transferred to Complainant, Atmel Corporation.
Natasha C. Lisman, J.D., F.C.I. Arb
DATED: September 29, 2000
1 Some of the companies whose names are included in other domain name registrations by respondent are Unilever, Mitsubishi, and Genzyme.