WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sweeps Vacuum & Repair Center, Inc. v. Nett Corp.

Case No. D2001-0031

 

1. The Parties

The Complainant is Sweeps Vacuum & Repair Center, Inc., a corporation organized and existing under the laws of the State of New York, United States of America, having its principal place of business at 705 Warren Street, Hudson, New York, United States of America.

The Respondent is Nett Corp., a corporation with an address at 7113 Lake Basin Road, Tallahassee, Florida, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <sweeps.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), based in Herndon, Virginia, United States of America.

 

3. Procedural History

3.1 A Complaint was submitted electronically to the WIPO Center on January 5, 2001, and the signed original together with four copies forwarded by express courier was received on January 8, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated January 11, 2001.

3.2 On January 12, 2001, a Request for Registrar Verification was transmitted to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1) confirm that the domain name at issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrarís Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.

3.3 On January 15, 2001, NSI confirmed by reply e-mail that the domain name at issue is registered with NSI, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.

3.4 The WIPO Center determined that the Complaint was not in formal compliance, and on January 16, 2001, the WIPO Center transmitted to the Complainant a Request for Amendment to the Complaint. On January 17, 2001, the WIPO Center received electronically and on January 22, 2001 in hard copy a copy of the Amended Complaint.

3.5 Upon further review, the WIPO Center determined that the Amended Complaint was not in formal compliance, and on January 18, 2001, the WIPO Center transmitted to the Complainant a Request for Second Amendment to the Complaint. On January 18, 2001 the WIPO Center received electronically and January 22, 2001, in hard copy, a copy of the Second Amended Complaint.

3.6 Upon further review, the WIPO Center determined that the Complaint as twice amended (hereinafter the "Complaint") satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The required fees for a single member Panel were paid on time and in the required amount by the Complainant.

3.7 No further formal deficiencies having been recorded, on January 24, 2001, 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 February 12, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondentís participation in these proceedings.

3.8 A Response was received electronically on February 12, 2001, and in hardcopy on February 14, 2001. The Respondent requested a three-member Panel and included its portion of the necessary fees. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on February 14, 2001.

3.9 On February 13, 2001, the WIPO Center received a request from Complainant to file a Reply to the Response, and on February 28, 2001, the WIPO Center received electronically and on March 2, 2001, in hardcopy a Reply to the Response.

3.10 On March 28, 2001, the WIPO Center Sent a Notification of Panel Appointment, appointing David Sorkin, Esq., Roderick Thompson, Esq., and M. Scott Donahey, Esq., all of whom had previously submitted Statements of Acceptance and Declarations of Impartiality and Independence. M. Scott Donahey was designated Presiding Panelist.

 

4. Factual Background

4.1 Complainant registered the service mark and design SWEEPS with the United States Patent and Trademark Office ("USPTO") in connection with retail store services featuring vacuum cleaners. The application for registration was filed on December 9, 1999, and the registration issued on October 10, 2000. The registration shows a first use in commerce on January 23, 1990. The complainant has a second registration with the USPTO for the same mark and design in connection with the same services, which registration issued March 7, 2000. Complaint, Annex C.

4.2 Respondent registered the domain name at issue on September 11, 1999. Complaint, Annex A.

4.3 Respondent has also registered numerous other domain names, the vast majority of which are purely descriptive in nature and not apparently similar or identical to registered marks. Complaint, Annex E.

4.4 Respondent has used the domain name at issue to resolve to a web site on which is located a directory page featuring links to various sites involving sweepstakes and related games. Complaint, Annex D. Respondent's web site is operated as an affiliate of a locator program operated by GoTo.com, Inc. Respondent entered into a contract with GoTo.com, Inc. to provide such services in April 2000, and Respondent receives a share of the advertising revenue realized by GoTo.com, Inc. as compensation. Response, Annex 2.

4.5 On November 9, 2000, Complainant sent Respondent a cease and desist letter to which Respondent did not reply. Complaint, Annex F.

 

5. Partiesí Contentions

5.1 Complainant contends that Respondent has registered as a domain name a mark which is identical and/or confusingly similar to the service marks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith. Complainant claims Respondent has registered more than 50 domain names.

5.2 Respondent denies that the domain name is identical or confusingly similar to Complainant's service marks, because Complainant's marks include a design and because Complainant's marks are merely descriptive. Respondent asserts that it has rights and legitimate interests in respect of the domain name, and that Respondent's registration and use are in good faith, although Respondent admits it has registered more than 400 domain names.

 

6. Discussion and Findings

Although Complainant submitted a Reply without having yet received approval from the Panel (see, Uniform Rule 12), since the Reply was received prior to the transmittal of the file to the Panel, in this instance the Panel elects to exercise its discretion to receive and consider the Reply.

Paragraph 15(a) of the Uniform Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "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."

Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(1) 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,

(2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

(3) that the domain name has been registered and is being used in bad faith.

We must first determine whether the domain name at issue is identical or confusingly similar to a mark in which Complainant has rights. The facts that Complainant's service mark includes a design and is suggestive, bordering on descriptive are indications of a weak mark. The fact that the mark is weak, however, does not mean that Respondent's domain name is not identical or confusingly similar to Complainant's mark. In addition, graphic elements, such as the Sweeps design, not being reproducible in a domain name, need not be considered when assessing identity or confusing similarity. See EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036, section 6(b)(i) (finding that the domain name was identical to the trademark where the text of the name was identical and only the graphic elements which cannot be reproduced in the domain name were left out). The Panel finds that the domain name at issue is identical to Complainant's service mark.

The Policy provides that a respondent can demonstrate rights to and legitimate interests in respect of the domain name by showing "before any notice to [Respondent], [Respondent's] 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 service." Policy, Paragraph 4(c)(i). At least six months prior to receiving Complainant's cease and desist letter, Respondent had agreed to and had begun using the domain name at issue in conjunction with a legitimate locator service. See Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029, Section 6(b) (finding that the name should not be transferred where Respondent provided bona fide goods and services prior to any notification of dispute). Moreover, Respondent was using the domain name not in the trademark sense, but in the descriptive sense, describing the types of businesses (sweepstakes related) listed on the directory page. This Respondent is entitled to do. See CRS Technology Corporation v. Condenet, Inc., NAF Case No. FA93547 (finding that where the registrant is using the domain name to communicate some aspect of the services it provides, then the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest).

Complainant argues that Respondent engaged in a pattern of registering many domain names and that this supports a conclusion of bad faith or lack of legitimate interest in the name. While a large number of domain name registrations (such as the 400 held by Respondent) may be relevant, under these circumstances, that pattern of registration does not lead to the conclusion that Respondentís behavior with respect to the domain name in question is not legitimate. The evidence does not establish that Respondent registered the names in order to sell them to trademark owners or to trade off the goodwill of trademark owners. In fact, most of the names registered by Respondent are generic terms that do not correspond to trademarks. As to <sweeps.com>, there is no indication that Respondent knew of Complainant or its mark at the time of registration. Instead it appears that Respondent registered the domain name in question as the recognized shortened version "sweeps" of the generic term "sweepstakes." Accordingly, the Panel finds that Respondent has rights to and legitimate interests in respect of the domain name at issue.

Because the Complainant has failed to prove the second of the three requirements, the Panel has no need to determine further issues in order to decide this case.

 

7. Decision

For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical to the mark in which the Complainant has rights, but that the Respondent has rights to or legitimate interests in respect of the domain name at issue. Accordingly, the relief requested in the Complaint is denied.

 


 

M. Scott Donahey
Presiding Panelist

David Sorkin
Panelist

Roderick Thompson
Panelist

Dated: April 13, 2001