WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Endeavors Technology, Inc. v. Dick In Jar

Case No. D2001-0770

 

1. The Parties

The Complainant is Endeavors Technology, Inc., a corporation organized in the State of California, United States of America (USA), with place of business in Irvine, California, USA.

The Respondent is Dick In Jar, with address in Los Angeles, California, United States of America (USA).

 

2. The Domain Name and Registrar

The disputed domain name is <endeavorstechnology.com>.

The registrar of the disputed domain names is Tucows, Inc., with business address in Toronto, Ontario, Canada.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on June 9, 2001, and by courier mail, received by WIPO on June 13, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On June 12, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Tucows, Inc. (with the Registrarís Response received by WIPO on June 14, 2001).

(b) On June 15, 2001, WIPO transmitted Notification of the Complaint and Commencement of the Administrative Proceeding to Respondent via e-mail, telefax and courier mail.

(c) On July 8, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.

(d) On July 10, 2001, WIPO invited the undersigned to serve as Panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On July 12, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(e) On July 13, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by July 27, 2001. On July 13, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant, Endeavors Technology, Inc., has developed and offers for sale computer software products and services in the peer-to-peer software industry. Complainantís principal software product is sold under the name "Magi". Complainant maintains an active commercial Internet website under the name "Endeavors Technology", at the Internet address (URL) <www.endeavors.com>. Under that name, Complainant advertises and offers software for sale, and offers certain software for downloading, by customers and prospective customers. (Complaint, para. 12A & Annex D, and Panel visit of July 27, 2001). Complainant has used the name "Endeavors Technology" in connection with the advertising and promotion of its products since at least as early as 1998. (Complaint, para. 12A).

According to the registrarís verification response to WIPO, dated June 14, 2001, Respondent is the listed registrant of the disputed domain name <endeavorstechnology.com>. The Administrative Contact, at the same address, is "Markum, Ben". According to the verification response, the record for the disputed domain name was created on November 9, 2000, and was last updated on June 12, 2001.

The disputed domain name is currently used by Respondent to direct Internet users to a website with home page headed "OnSystems, Inc." The "OnSystems, Inc." website promotes and offers for sale peer-to-peer software products that are directly competitive with Complainantís peer-to-peer software products. Respondentís "OnSystems, Inc." website contains no disclaimer of affiliation with Complainant. (Complaint, para. 12A & Annex E, and Panel visit of July 27, 2001).

An Internet website identified by the address (URL) <www.onsystems.com> is identical to the website identified by the disputed domain name. The registrant of <onsystems.com> has recently been changed to "interfriendly", with the same address as "Dick in Jar". The registrant of <onsystems.com> formerly was "Dick in Jar", the registrant of the disputed domain name. (Id., para. 12A & Annex G).

On May 7, 2001, Complainant (through counsel) sent a cease and desist demand to Respondent regarding its use of the disputed domain name (Letter from William English to Ben Markum, dated May 7, 2001, Complaint, Annex H). In a telephone conversation with Complainantís President, Brian Morrow, of June 7, 2001, Respondent offered to sell the disputed domain name to Complainant for $15,000. (Complaint, para. 12C).

The Service Agreement in effect between Respondent and Tucows, Inc. subjects Respondent to Tucows, Inc.ís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant asserts common law trademark rights in "ENDEAVORS TECHNOLOGY" based on its use of that mark in commerce (see Factual Background, supra). Complainant claims that the disputed domain name is identical or confusingly similar to the mark in which it has rights.

Complainant states that Respondent has no rights or legitimate interests in the disputed domain name. This is said to be evidenced by:

(1) Respondentís misleading self-identification in its registration information;

(2) Respondentís failure to use the domain name for a bona fide offer of goods or services;

(3) Respondent has not been commonly known by the disputed domain name, and

(4) Respondentís lack of fair or legitimate non-commercial use of the name.

Complainant alleges that Respondent registered and has used the disputed domain name in bad faith. This is said to be evidenced by:

(1) Respondentís use of the name to divert Internet users for commercial gain to its website by creating confusion as to Complainantís affiliation with the site;

(2) Respondentís disruption of Complainantís business, and

(3) Respondentís offer to sell the disputed domain name to Complainant at a price substantially in excess of its out-of-pocket expenses related to the name.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

B. Respondent

Respondent has failed to respond to Complainantís contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (id., paragraph 15(a)).

Complainant has not registered the "ENDEAVORS TECHNOLOGY" mark on the Principal Register at the USPTO (Footnote 1).Complainantís asserted mark does not enjoy a presumption of secondary meaning under federal law based on registration (Footnote 2).

Common law rights in a trademark or service mark may arise under the federal Lanham Act or state law, (Footnote 3) and a substantial number of decisions by administrative panels under the Policy have been based on common law trademark or service mark rights (Footnote 4).The principal issue in this proceeding is whether Complainant has established such common law rights.

Complainantís proposed mark, "ENDEAVORS TECHNOLOGY" is suggestive in that some imagination, thought or perception is required to determine the nature of the product from the term (Footnote 5). As a suggestive mark, ENDEAVORS TECHNOLOGY is inherently distinctive. Complainant has used the term in commerce, and Respondent has offered no evidence of competing users of the term.

The remaining issue is whether Complainant has used the term "ENDEAVORS TECHNOLOGY" as a trademark. To function as a trademark, a term must be associated with a product. It is apparent that Complainant has principally used the term "Magi" to identify its peer-to-peer networking software product. For example, Complainantís web pages state "Magi is the brand name Endeavors Technology uses for its innovative P2P technology software suite". Complainantís principal use of the term "ENDEAVORS TECHNOLOGY" has been to identify its business. The term has thus generally been used as its trade name.

The Panel is nevertheless persuaded that "ENDEAVORS TECHNOLOGY" has been used sufficiently in connection with a product to be considered a trademark. Complainant uses the term "ENDEAVORS TECHNOLOGY" on the home page and subpages of its website on which it is offering its proprietary software for sale or trial by Internet users, and it refers to its product, inter alia, as "Endeavorís peer-to-peer software". Complainant has tied its business name to its product in advertising and promotion, even if its use of this name has been secondary to another name (i.e. "Magi") associated with the product.

Of considerable import here is that Respondent clearly anticipates that Internet users seeking Complainantís peer-to-peer software product will use the name "ENDEAVORS TECHNOLOGY", either directly in an Internet address or in a search engine, to find Complainantís product. Respondent directs Internet users who are seeking "ENDEAVORS TECHNOLOGY" software to its own competing website (where it offers a product competitive with that of Complainant) using the domain name <endeavorstechnology.com>. Respondent has gone to substantial lengths to support Complainantís claim that Internet users will associate its proprietary product with "ENDEAVORS TECHNOLOGY", and not only (or perhaps even primarily) with "Magi". The fact that consumers will look for Complainantís product under the term "ENDEAVORS TECHNOLOGY" supports a finding that the term serves a trademark function in connection with Complainantís product.

The Panel determines that "ENDEAVORS TECHNOLOGY" is a trademark in which Complainant has rights. The disputed domain name "endeavorstechnology.com" directly incorporates Complainantís mark. The elimination of space between terms and the addition of the generic top level domain (gTLD) ".com" are not material for purposes of comparing the disputed domain name and mark in the context of this proceeding.

The Panel determines that the disputed domain name is identical to Complainantís mark within the meaning of paragraph 4(a)(i) of the Policy. Complainant has therefore established the first element necessary for a finding that Respondent has engaged in abusive domain name registration and use.

Respondent has used the disputed domain name for purposes of diverting Internet users to a website at which it offers a product competing with that of Complainant. Respondent was obviously aware of Complainantís mark and product when it established this use. Respondent has made no use of the disputed domain name that might establish rights or legitimate interests in the name.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain name within the meaning of paragraphs 4(a)(ii) and 4(c) of the Policy. Complainant has thus established the second element necessary for a finding of abusive domain name registration and use.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are:

(1) that the domain name has been registered or acquired by a respondent "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 [respondentís] documented out-of-pocket costs directly related to the domain name" (id., para. 4(b)(i));

(2) that a respondent has 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii));

(3) that a respondent has "registered the domain name primarily for the purpose of disrupting the business of a competitor" (id., para. 4(b)(iii)); and

(4) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

Respondent in this case has used the disputed domain name <endeavorstechnology.com> to divert Internet users to a website for "OnSystems, Inc." that offers products directly competitive with those of Complainant. There is no disclaimer of association with Complainant. Respondent has made a deliberate effort to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainantís mark as to the source of a product on its website, or as to Complainantís affiliation with its website. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Having made this determination, the Panel need not consider the other grounds asserted by Complainant for a finding of bad faith on the part of Respondent.

Complainant has therefore established the third and final element necessary for a finding that Respondent has engaged in abusive domain name registration and use.

The Panel will therefore request the registrar to transfer the domain name <endeavorstechnology.com> to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Dick in Jar, has engaged in abusive registration and use of the domain name <endeavorstechnology.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <endeavorstechnology.com> be transferred to the Complainant, Endeavors Technology, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: July 29, 2001

 



Footnotes:

1. See FactualBackground, supra. (back to text)

2. See 15 USCS ß 1057(b) (establishing presumption of exclusive right to use based on registration). (back to text)

3. See, e.g., Century 21 Real Estate v. Billy Sandlin, 846 F.2d 1175 (9th Cir. 1988). (back to text)

4. See, among others by this sole panelist, Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057, decided March 22, 2000, and; Desert Schools Federal Credit Union v. Symlink Communications, llc, WIPO Case No. D2001-0528, decided July 4, 2001. (back to text)

5. The boundary line between arbitrary and suggestive marks is not well defined. In this case, the descriptive term "technology" is reasonably associated with computer software used for network functions, and it is used in combination with the term "endeavors" meaning "strives to achieve". The combination of terms "ENDEAVORS TECHNOLOGY" may lead consumers to associate Complainantís proposed mark with its principal product. Arguably Complainantís mark is arbitrary. Resolution of the question whether Complainantís mark is suggestive or arbitrary is not material to the outcome of this proceeding. (back to text)