WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Terabeam Corp. v. Colin Goldman

Case No. D2001-0697

 

1. The Parties

Complainant is Terabeam Corporation ("Terabeam"), 2300 Seventh Avenue, Seattle, Washington 98121, USA.

Respondent is Colin Goldman ("Goldman"), 1047 Fourth Street, Santa Monica, California 90403, USA.

 

2. Domain Name and Registrar

The domain name at issue is: <tera-beam.com> (the "Domain Name").

The registrar is Internet Names Worldwide (the "Registrar"), Level 2, 120 King Street, Melbourne 3000, Australia.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received Terabeamís Complaint by e-mail on May 24, 2001, and in hard copy on May 28, 2001. 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"). Complainant made the required payment to the Center.

On May 30, 2001, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On May 31, 2001, the Registrar transmitted via e-mail to the Center its response, confirming that (1) a copy of the Complaint was sent to it by Complainant as required by Supplemental Rule 4(b); (2) the Domain Name was registered through it; (3) Respondent is the current registrant of the Domain Name; (4) the Administrative Contact for the Domain Name is the Respondent and the Technical Contact for the Domain Name is DNS Administrator, 216 W. Jackson Blvd., Suite 325, Chicago, IL 60606 [1]; (5) the Policy applies to the Domain Name; and (6) the Domain Name is active.

On July 4, 2001, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via e-mail with copy by courier (FedEx) and by facsimile to Respondent and to the Registrar [2]. The Center advised that Respondentís Response was due by July 23, 2001, pointed out that the Response should be in accordance with the Rules and the Supplemental Rules, and described the consequences of a default if the Response was not sent by the due date. The Center also noted that the Complainant had elected for a single panelist to decide this matter.

The requirements of Rule 2(a) having been satisfied, the formal date of the commencement of this administrative proceeding, pursuant to Rule 4(c), is July 4, 2001.

No Response was received from Respondent by the July 23, 2001 deadline. On July 25, 2001, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default. The Center advised Respondent that (a) Respondent had failed to comply with the deadline for submission of its Response and (b) the consequences of default, including (1) appointment of a single panelist (per the Complainantís request); (2) the Panel would be informed of Respondentís default and would decide in its sole discretion whether to consider a Response if submitted later; and (3) notwithstanding the default, the Center would continue to send all case-related materials to Respondent.

No Response conforming to the Rules was received from Respondent, either by the July 25, 2001 deadline or at any other time [3].

On August 14, 2001, the Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case. Pursuant to Rule 15(b), the Center further informed the parties that, absent exceptional circumstances, the Panel would forward a decision to the Center by August 28, 2001.

On August 16, 2001, the Center transmitted the case file to the Panel.

 

4. Factual Background; Partiesí Contentions

a. The Trademark

The Complaint is based on Complainantís alleged ownership of rights to the mark TERABEAM, which Complainant claims to have used for communications goods and services since 1997.

Complainant owns at least one federal registration for the TERABEAM mark. Complainant provided the Panel with a printout from the U.S. Trademark Electronic Search System ("TESS") of the United States Patent and Trademark Office ("USPTO"), for its U.S. Reg. No. 2,398,305.

U.S. Reg. No. 2,398,305 is for the word mark TERABEAM in block letters. A block-letter registration is the broadest claim to a word mark, in that it is "not Ö restricted to any particular form or type." Exxon Corp. v. National Foodline Corp., 579 F.2d 1244, 1247 (C.C.P.A. 1978). This registration issued in 2000 for communications, namely, providing high speed optoelectronic transmission of data, and claims a date of first use in 1997.

b. Jurisdictional Basis

The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. A copy of the Registrarís registration agreement, which incorporates the Policy by reference, is appended as Exhibit B to the Complaint.

In Paragraph 11 of its Complaint, Complainant avers that each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.

c. The Complainantís Contentions

Complainant asserts as follows:

- That Complainant has been providing communications goods and services in commerce under the mark TERABEAM since 1997, and that it is known by the TERABEAM mark around the world.

- That the Complainant owns registrations and applications for registrations for TERABEAM in the United States and abroad.

- That Complainant operates a web site at the web address <www.terabeam.com>.

- That the Domain Name is identical to Complainantís TERABEAM mark, and is likely to cause confusion among consumers as to source or sponsorship.

- That Respondent has no legitimate interest in the Domain Name because (1) Respondent is not commonly known by the Domain Name; (2) Respondent has acquired no trademark or service mark rights in the Domain Name; (3) Respondent is not making legitimate non-commercial or fair use of the Domain Name; and (4) Respondent has not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.

- That Respondentís intent in registering the Domain Name was to seek commercial gain. Specifically, Respondent placed at the web site corresponding to the Domain Name a notice that the Domain Name is up for "auction," with a "starting bid" of $500.

- That Respondentís activity interferes with Complainantís business and creates a likelihood of confusion with Complainantís mark as to source, sponsorship, affiliation or endorsement of the web site.

- That Complainantís legal representative attempted to contact Respondent twice, but received no response from Respondent.

d. The Response

As noted above, the Respondent is in default pursuant to Rule 5(e), Rule 14 and Supplemental Rule 7(c) because no Response was received from Respondent by the July 25, 2001 deadline.

Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for the Complainant. Rather, under Paragraph 4(a) of the Policy, it remains the Complainantís burden to establish that all three of the required criteria for a transfer of the Domain Name or other remedy have been met

Under Rule 5(e) and Rule 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under Rule 14(b), the Panel is empowered to draw such inferences from the default as it considers appropriate.

 

5. Discussion and Findings

a. Regulations Applicable to Consideration of the Merits

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a). In the Panelís view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Name, each of the following:

(i) The Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; and

(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.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondentís rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).

b. Effect of the Default

In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the Domain Name, such as use or preparation to use the Domain Name prior to notice of the dispute, being commonly known by the Domain Name, or making legitimate noncommercial or fair use of the Domain Name.

c. Complainantís Proof

(i) Domain Name Identical or Confusingly Similar to Trademark

Complainant has proven that it is the owner of trademark rights in the mark TERABEAM. Complainantís registrations of its mark(s) on the Principal Register of the USPTO establish a presumption of validity of the marks under United States law. See 15 U.S.C. ß 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations constitute constructive notice to all other parties of Complainantís ownership of the marks. See 15 U.S.C. ß 1072.

In comparing Complainantís mark to the Domain Name, it is well established that the generic top-level domain, in this case ".com," must be excluded from consideration as being a generic or functional component of the Domain Name.

The remaining terms, TERABEAM and TERA-BEAM, are essentially identical. This panel agrees with the numerous distinguished WIPO panels that have found mere addition (or deletion) of a dash ("-") within a mark not to constitute a substantive change or obviate confusion. E.g., The Coca-Cola Co. v. Gamlebyen Invest AS, Case No. D2000-1677 (WIPO February 14, 2001) (recognition of a mark "applies whether the trademark is rendered with or without a dash"); Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO October 6, 2000) ("Mere differentiation by the insertion of dashes ("-") still leaves the two [marks] virtually identical."); Transamerica Corp. v. Inglewood Computer Services, Case No. D2000-0690 (WIPO August 20, 2000) (finding <trans-america.com> to be "nearly identical" to mark Transamerica "in that it differs only by the lower case Ďtí and the inclusion of a dash after the fifth letter in the word Ďtransamericaí.").

Accordingly, the Panel finds that the Domain Name is virtually identical to Complainantís mark, and that confusion between the two would be likely, to the extent any use were made of the Domain Name.

(ii) Whether Respondent Has Rights or Legitimate Interest in the Domain Name

There is no evidence in the record that Respondent has any legitimate interest in the Domain Name. Complainant stated in the Complaint that attempts were made to contact Respondent, at least one of which (a letter dated April 3, 2001) communicated Complainantís understanding that Respondent was not using the Domain Name for an operational web site. Respondent did not respond to the April 3, 2001 letter [4]. Complainant further stated in the Complaint that Respondent has no rights or legitimate interest in the Domain Name. The Panel finds this contention to be credible, and it is in any event unrebutted. The federal registration of Complainantís mark, coupled with the Domain Nameís overwhelming similarity to Complainantís mark and corporate name, and Respondentís failure to advance any of the defenses provided in Paragraph 4(c) of the Policy lead this Panel to conclude that Respondent had no rights or legitimate interest in the Domain Name.

(iii) Registration and Use in Bad Faith

Complainantís third hurdle is to establish that Respondent has registered and used the Domain Name in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition or registration of 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 Ö or to a competitor of that complainant, for valuable consideration in excess of [registrantís] documented out-of-pocket costs directly related to the domain name."

In this case, the Panel finds convincing evidence of this type of bad faith. The screen shot of the web site corresponding to the Domain Name submitted as Exhibit E to the Complaint shows that Respondent had put the Domain Name up for "auction," with a "starting bid" of $500. On August 23, 2001, the Panel visited the site, and found that the Domain Name had a purported "List Price" of $5,000 Ė ten times the "starting bid" originally requested by Respondent [5].

That sale of the Domain Name for a profit was Respondentís "primary" purpose in registering it follows from the fact that he does not appear to have had any other purpose. Respondent has no web site accessible at the Domain Name (indeed, he merely has an advertisement attempting to sell it there), and no evidence of record suggests that he is making any other use of the Domain Name. Such inaction, particularly absent a plausible explanation, can be indicative of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (registration together with "inaction" can constitute bad faith). This inaction, coupled with Respondentís attempts to sell the Domain Name for at least $500, and more recently for $5,000, are sufficient, in the view of the Panel. Accordingly, the Panel finds bad faith of the form illustrated by Paragraph 4(b)(i) of the Policy.

The second illustration of bad faith in the Policy occurs when the registrant registers the domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when Respondent has engaged in a pattern of such conduct. Complainant does not allege that this was Respondentís intention in registering the Domain Name, nor does Complainant allege any pattern of improper registrations by Respondent. Accordingly, the Panel does not find this illustration applicable here.

The third illustration of bad faith is registration "primarily for the purpose of disrupting the business of a competitor." On the facts of this case, there is no evidence that Respondent is a competitor of Complainant, and Respondentís registration of the Domain Name does not appear to have disrupted Complainantís business. Accordingly, the Panel does not find this illustration applicable either.

The fourth illustration, use of the domain name in an effort to attract, for commercial gain, Internet users to a competing web site, does appear to be applicable here. According to the screen shot supplied by Complainant at Exhibit E to the Complaint, Respondent placed the following notice on the web site: "Terabeam, Inc. is about to dominate all last-mile Internet traffic in the U.S. Within two years, their name will be better known than Cisco. This highly recognizable domain can be yours." Complainant avers that this notice creates a likelihood of confusion as to source or sponsorship. More accurately, the Panel finds, the notice evidences an intent to create such confusion in the future Ė or an intent to enable another to create such confusion by using the Domain Name for a business that could offer products or services similar to those offered by Complainant. In the Panelís view, such an intention falls within the scope of Paragraph 4(b)(iv) of the Policy. That paragraph refers to intentional attempts to attract Internet users "to your web site or other on-line location." Inviting a prospective purchaser of the Domain Name to initiate confusion is an inducement to create confusion through Respondentís on-line location, in violation of Paragraph 4(b)(iv) of the Policy.

In sum, the Panel concludes that Respondent has registered and used the Domain Name in bad faith, as exemplified by illustrations (i) and (iv) in Paragraph 4(b) of the Policy [6].

 

6. Decision

In light of the findings and analysis by the Panel, the Panel decides that Complainant has met its burden of proving: (1) the Domain Name is confusingly similar to Complainantís trademark(s) and/or service mark(s); (2) Respondent has no rights and no legitimate interest in respect of the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that the Domain Name be transferred to Complainant.

 


 

Michael A. Albert
Sole Panelist

Dated: August 24, 2001

 


Footnotes:

1. The Registrar provided a printout of the information contained in its WHOIS database for the Domain Name, including the Respondentís postal address, telephone number and e-mail address.

2. The Center also sent the same items to the required e-mail addresses as set out in Rule 2(a).

3. The only correspondence received by the Center from Respondent was an August 2, 2001 letter alleging that this administrative proceeding is a violation of his rights to "due process." Respondentís allegation is without merit. The registration agreement entered into by Respondent when he registered the Domain Name through the Registrar expressly provides (at Paragraph 4(a)) that the Registrant submits himself to this administrative proceeding. Thus, this administrative proceeding has not been imposed upon Respondent by an outside body as he alleged; rather, Respondent submitted himself, by contract, to the jurisdiction of the Center. In any event, this proceeding affords Respondent both notice and an opportunity to be heard. Respondentís failure to take advantage of that opportunity cannot be attributed to the Center or the Complainant. If anything, Respondentís letter makes it clear that he had actual notice of this proceeding and has chosen to disregard it.

4. The record contains no evidence that Respondent received the April 3 letter. However, Respondent declined to rebut the inference that the letter was received. Pursuant to its discretion under Rule 10(c) to "determine the admissibility, relevance, materiality and weight of the evidence," the Panel infers from Respondentís silence that the April 3 letter was received by Respondent.

5. While fact investigation is not normally the role of judges or arbiters in adversarial proceedings, it appears to be appropriate for panelists in UDRP cases to review, at least, the publicly-accessible Internet web site (if any exists) associated with the disputed domain name(s). Indeed, visits to web sites appear to be an accepted panel practice. E.g., Pharmacia & Upjohn Co. v. Brainbow, Inc., Case No. D2000-1763 (WIPO Feb. 15, 2001); High-Class Distributions, S.r.l. v. Online Entertainment Services, Case No. D2000-0100 (WIPO May 4, 2000)).

6. Illustrations (i) and (iv) constitute alternative grounds, each independently sufficient, for the Panelís finding of bad faith.