WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Computer Connection v. Gamble Parts Dart, Inc.

Case No. D2001-0783

 

1. The Parties

Complainant is John Michael Eagan, JME Computer Connection, Inc., Greenbrae, California, USA.

Respondent is Gamble Parts Dart, Inc., for which the contact person is Dennis Gamble. Mr. Gamble resides in Mt. Olive, Alabama, USA.

 

2. The Domain Name and Registrar

The domain name at issue is <computerconnection.com>.

It is referred to as the Domain Name. The registrar is Network Solutions, Inc.

 

3. Procedural History and Jurisdiction

The WIPO Arbitration and Mediation Center (the Center) received the Complaint on June 14, 2001 (electronic version) and June 19, 2001 (hard copy). The Complaint identified Dennis Gamble as Respondent.

On June 15, 2001, the Center transmitted, via e-mail to Network Solutions, a request for registrar verification in connection with this case. On June 20, 2001, Network Solutions, Inc. transmitted, via e-mail to the Center, its Verification Response, stating that Gamble Part Dart Inc. is the registrant for the Domain Name. Dennis Gamble is the administrative and billing contact, while the technical contact is Network Operations Center, which is located in Pleasant Hill, California.

On June 21, 2001, the Center notified Complainant that its Complaint was deficient. The Center received an amended Complaint on June 21, 2001 (electronic version) and July 3, 2001 (hard copy). The amended Complaint identifies Gamble Parts Dart, Inc. as Respondent. The Center verified that the amended Complaint satisfied the formal requirement 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.

Having verified that the amended Complaint satisfied the formal requirements of the Policy and the Rules, on July 3, 2001, the Center transmitted to Respondent its Notification of Complaint and Commencement of Administrative Proceeding via post/courier, facsimile, and e-mail.

The formal date of the commencement of this administrative proceeding is July 3, 2001.

Mr. Gamble notified the Center via e-mail on June 22, 2001, that he did not understand the "process [he needed] to protect [his] name". In an e-mail message sent on June 25, 2001, the Center directed Mr. Gamble both to its website and to the ICANN website, so that he could review the Policy, Rules, and Supplemental Rules. Respondent failed to respond to the Notification of Complaint and Commencement of Administrative Proceeding, and the Center notified Respondent of its default on July 25, 2001, via e-mail.

In view of Complainantís designation of a single panelist and Respondentís default, the Center invited Mr. Richard G. Lyon to serve as a panelist.

Having received Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date on August 9, 2001. The projected decision date was August 23, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules and that the Panel has jurisdiction by virtue of Section 4(a) of the Policy.

 

4. Factual Background

The amended Complaintís recitation of the facts is sparse. The Complaint contains little more than a rote recital of the Policy and Rules [1].

Complainant repairs and assembles computers. On May 31, 2001, the State of California granted John Michael Eagan a service mark for "Computer Connection." The mark was first used in California in 1994. As discussed below, the amended Complaint does not provide details regarding the extent of Complainantís use of the mark.

Respondent apparently registered the Domain Name on March 5, 1999. The site <computerconnection.com> does not have any significant content and currently notifies the viewer that content is "Coming Soon."

Complainant contacted Respondent to inquire about obtaining the Domain Name, and Mr. Gamble sent Complainant an e-mail offering to sell the Domain Name to Complainant if Complainant would make "a resonable [sic] offer than [sic] is in line with the going rate." Mr. Gamble stated in the e-mail that at the time he registered the Domain Name, he intended to use the Domain Name for a website from which he would sell computers. However, he explained in the e-mail that he had been contacted by two other businesses named Computer Connection (one in Georgia and one in New York), and he realized that, "if the price [wa]s tempting[,]" he could make a profit by selling the Domain Name to the highest bidder. His e-mail advised Complainant as follows: "You may want to make an offer rather than spend a great deal of money trying to take away a name that several businesses in the U.S. go by and desire the name as much as you do."

 

5. Parties' Contentions

Complainant asserts that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, that Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Domain Name was registered and is being used in bad faith.

Complainantís entire pleading in support of these assertions states as follows:

Computer Connection, Inc. is in possession of service mark #054900 in the state of California. We do computer repair and assembly. We feel that the Respondent does not have the rights or legitimate interest in computerconnection.com for these reasons: He does not own an entity with the name Computer Connection. Nor does he have a website posted under the name computerconnection.com. We feel that the name was registered in bad faith for this reason: We inquired about obtaining the domain and he asked for an amount that was well in excess of his out-of-pocket costs. We feel that he registered the name computerconnection.com primarily for the purpose of selling it.

On the basis of this scant pleading, Complainant asks the Panel to transfer the Domain Name from Respondent to Complainant.

Respondent has failed to reply to the amended Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the 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." According to paragraph 10(d) of the Rules, "[t]he Panel shall determine the admissibility, relevance, materiality, and weight of the evidence."

Complainant must prove the elements set out in paragraph 4(a) of the Policy. These elements are as follows:

(i) Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which 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.

Complainant bears the burden of proof on each of these elements. Respondentís default does not automatically result in judgment for Complainant. The Panel will consider Respondentís e-mail correspondence with the Center and with Complainant that is in the record of this proceeding.

A. Trademark or Service Mark in Which Complainant Has Rights

Complainant shoulders the burden of proving that the Domain Name is identical or confusingly similar to a service mark in which Complainant has rights. Complainant has provided the Panel with a copy of its Certificate of Registration of Service Mark for "Computer Connection" issued by the state of California. However, the mere fact that Complainant holds a California service mark for Computer Connection (issued two years after Respondent's registration of the Domain Name) is not sufficient to prove that Complainant has rights in the mark that supersede those of everyone else, for several reasons. First, Complainant holds a service mark for a name that is generic. Second, Complainantís rights, at least as shown in the record, do not obtain outside California. Third, the evidence provided to the Panel indicates that at least two additional businesses in states other than California are named Computer Connection. To make matters worse, Complainant did nothing more than plead naked conclusions, rather than facts that if proven would justify the conclusions that are pleaded [2].

The Panel believes that Complainant has not carried its burden of proving that it has rights in the mark underlying the Domain Name.

The Mark Is Generic

Complainantís service mark "Computer Connection" is a generic name that could conceivably be used by numerous entities that buy, sell, service, repair, or deal in computers or computer parts. A mark consisting entirely of common, descriptive words is entitled to less protection under U.S. trademark law and with respect to its corresponding domain name. Ownership of the service mark does not ipso facto give Complainant the exclusive right to the descriptive name "Computer Connection" in all contexts related to computers [3]. There is no evidence (or allegation) of any special association of the service mark with Complainantís business, no evidence (or allegation) of any investment in the mark by way of use or advertising, no evidence (or allegation) of the value of the business conducted under the mark, and no evidence (or allegation) that Respondent or the Domain Name has diverted customers from Complainant [4]. Complainant has done nothing more than prove its ownership of a generic California service mark that customers may or may not associate with Complainantís business.

Limited Rights

Complainantís ownership of a California service mark for Computer Connection, standing alone, does not establish any rights beyond that state or the limited class of services ("computer repair and assembly") for which the mark was granted. It is conceivable that other states besides California have granted service marks for the same name. The evidence before the Panel indicates that at least two other businesses in the country (one in Georgia and one in New York) are named Computer Connection. Respondent is located in Alabama.

Value of the Mark.

Complainant has provided no evidence of any attempts by it to protect its service mark through litigation or of any special association of its generic name with Complainant [5]. The Complainant has in fact submitted no evidence at all other than its single state registration, and its conclusionary allegations add nothing.

Complainant has not carried its burden of proof on this issue. The Panel in autobytel.com inc. v. Sand WebNames aptly summarized this Panelís holding in the present case:

If a Complainant is going to rely on intellectual property rights, as it must, there must be adequate evidence of ownership or other sufficient entitlement to such rights. Such is the basis of intellectual property entitlement. A Panelist does not have the discretion to infer the existence of rights for which there is insufficient evidence. If the Complainant has the necessary rights in this instance, it is unfortunate that the minimally necessary evidence to demonstrate them was not presented [6].

Since the Panel holds that Complainant has failed to establish the first required element, it is unnecessary for the Panel to consider whether the Domain Name is identical or confusingly similar to Complainantís service mark, or whether the Domain Name has been registered and is being used in bad faith by Respondent.

 

7. Decision

For the foregoing reasons, the amended Complaint is dismissed.

 


 

Richard G. Lyon
Sole Panelist

Dated: August 20, 2001

 


Footnotes:

1. In some instances Complainant did not even bother to eliminate the alternative language not applicable here (e.g., "[T]he Respondent is required to submit to a mandatory administrative proceeding because: (1) The domain name [s] [is/are] identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) The Respondent has no rights or legitimate interests in respect of the domain name [s]; and (3) The domain name [s][was/were] registered and [is/are] being used in bad faith.").

2. See Jones Apparel Group, Inc. v. jonesapparelgroup.com, WIPO Case No. D2001-0719 (admonishing that "it is not th[e] Panelís role to perfect a poor pleading"). The Panel earlier characterized the Complaint as "extremely sparse and poorly-drawn." Id.

3. PRIMEDIA Special Interest Publications Inc. v. Treadway, WIPO Case No. D2000-0752.

4. Compare cases in which the Complainant provides allegations or evidence of extent of sales or customers. E.g., Fed. Cartridge Co. v. Madmouse Communications, WIPO Case No. D2001-0756; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.

5. Pet Warehouse v. Pets.Com, Inc., WIPO Case No. D2000-0105.

6. WIPO Case No. D2001-0076.