WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Avanade Inc. v. Robert Tansey

Case No. D2001-0824

 

1. The Parties

The Complainant is Avanade Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Seattle, Washington, USA.

The Respondent is Robert Tansey, with address in Roanoke, Texas, USA.

 

2. The Domain Name and Registrar

The disputed domain name is <avanadeconsulting.com>.

The registrar of the disputed domain name is Register.com, Inc., with business address in New York, New York, USA.

 

3. Procedural History

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

(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on June 22, 2001, and by courier mail received by WIPO on June 25, 2001. Payment of the requisite filing fees accompanied the courier mailing. On June 26, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Register.com, Inc. (with the Registrarís Response received by WIPO on June 26, 2001).

(b) On June 28, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.

(c) On July 12, 2001, Respondentís response was received via e-mail by WIPO. Respondent also transmitted its response to Complainant.

(d) On or about July 17, 2001, Complainant transmitted via e-mail a Reply to Respondentís response to WIPO and Respondent, accompanied by a request to the Panel for leave to file this supplemental submission.

(e) On July 17, 2001, Respondent transmitted via e-mail to WIPO and Complainant an indication of intention to reply to the supplemental submission by Complainant. On or about July 20, 2001, Respondent transmitted via e-mail to WIPO and Complainant a Response to Complainantís Second Complaint.

(f) On July 20, 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 August 2, 2001, the undersigned transmitted via telefax the executed Statement and Declaration to WIPO.

(g) On August 3, 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 August 17, 2001. The Panel received a hard copy of the file in this matter by courier from WIPO.

(h) Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, WIPO notified the parties that the projected date for a decision in this matter would be extended.

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. The proceedings have been conducted in English.

 

4. Factual Background

In February 2000, two business enterprises, Accenture LLP ("Accenture") and Microsoft, Inc. ("Microsoft"), formed and incorporated in the United States a joint venture enterprise named "Avanade Inc.", the Complainant in this proceeding. The joint venture partners are reported to have invested one billion U.S. dollars in this enterprise. (Complaint, para. 12 & Annex 5)

On February 9, 2000, Complainant submitted an intent to use application at the United States Patent and Trademark Office (USPTO) regarding the word service mark "AVANADE" (ser. no. 75914037, filed Feb. 9, 2001) in international class (IC) 42, covering information technology consulting services, as further specified. This application was published for opposition, and a notice of allowance has been issued by the USPTO. (Id., para. 18 & Annex 10)

On February 9, 2000, Complainant also submitted an intent to use application at the USPTO regarding the stylized word and design service mark "A AVANADE/SYSTEMS.SOLUTIONS.SUCCESS" (ser. no. 75914037, filed February 9, 2001) in international class (IC) 42, covering information technology consulting services, as further specified. This application was published for opposition, and the case file has been assigned to an examining attorney. (Id.)

Complainant has applied for registration of the "AVANADE" mark in numerous countries around the world. The "AVANADE" mark has been registered in Australia, Chile, Peru and Switzerland. (Id., para. 19 & Annex 12, including certificates of registration)

On March 13, 2001, Accenture and Microsoft issued a joint press release concerning initiation of the joint venture that constitutes Complainant. This announcement was reported on widely by news media in the United States and other countries. (Id., para. 14 & Annex 5). The activities of Complainant continue to be reported extensively by news media worldwide. (Id., Annex 6)

Complainant maintains an active commercial website at the Internet address (URL) <www.avanade.com>. (Id., Annex 4)

Complainant actively provides services in the design and implementation of computer-based business management systems in the United States and around the world. Complainant has expended substantial financial resources in establishing offices in countries around the world. Complainant has expended substantial financial resources in advertising and promoting the "AVANADE" mark.

According to the registrarís verification response to WIPO, dated June 26, 2001, "rtansey" and "r tansey" is the listed registrant of the domain name <avanadeconsulting.com>. The Administrative Contact, at the same address, is "rtansey" and "r tansey". The registrarís verification response indicates that the record of the disputed domain name was created on March 13, 2000, and was last updated on January 9, 2001.

As of the date of the filing of the complaint in this proceeding, there was no evidence of activity at a website identified by the disputed domain name. (Complaint, para. 20 & Annex 13). Respondent does not dispute that no use of the disputed domain name has been made in connection with an active website.

On January 26, 2001, Respondent initiated contact via e-mail with Complainant concerning the disputed domain name with the query "are you avanadeconsulting too?" (e-mail from robrjt@hotmail.com to information@avanade.com, Complaint, Annex 14). Following an exchange in which Complainant indicated that no such site existed, Respondent indicated "It will be up. It is a critical review site of Avanade." (e-mail from Rob Tansey to information@avanade.com, March 2, 2001, Id.)

On April 20, 2001, Complainant (via counsel) sent a cease and desist and transfer demand to Respondent via certified mail. The aforesaid demand went unclaimed by Respondent. (Id., Annex 15 & 16)

On May 5, 2001, Respondent sent an e-mail to Complainant with the subject "want to buy avanadeconsulting.com?" and the text "a friend has it for sale" (Id., Annex 17). On May 23, 2001, a follow-up e-mail from Respondent advised "a critique of the ms based consulting business is what it is going to be" (Id., Annex 18). On May 24, 2001, an e-mail from Respondent to Candice Chevaillier of Complainant stated, "Hi Candice, He is open to offers." (Id., Annex 18)

Regarding the correspondence in respect to the offer for sale of the disputed domain name, Respondent has stated "I found out a younger family member who knew what I was using the site for wrote email to Avanade using my aol account. He has been reprimanded." (Response)

Respondent indicates that he has plans to use the disputed domain name for a "non-profit Ďwatchdogí site about Avanade and its business practices" (Id.)

The Service Agreement in effect between Respondent and Register.com subjects Respondent to Register.comís 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 WIPO is one, regarding allegations of abusive domain name registration. (Policy, paragraph 4(a))

 

5. Partiesí Contentions

A. Complainant

Complainant asserts common law rights in the service mark "AVANADE" in the United States, and indicates that it has applied for registration of the mark in the U.S. Complainant indicates that the process of trademark registration with the USPTO has reached an advanced stage, and that it is reasonable to assume that registration will be granted in the near future.

Complainant indicates that the service mark "AVANADE" is registered in several countries outside the United States, and that applications for registration have been submitted in numerous countries.

Complainant states that its mark is "arbitrary".

Complainant indicates that it is using the AVANADE" mark in commerce in the United States and worldwide, that it is actively advertising and promoting its services under the mark and that the mark is recognized as identifying it as the source of services.

Complainant asserts that the disputed domain name is confusingly similar to its mark. It asserts that the disputed domain name incorporates its mark in its entirety, and that addition of the term "consulting" does "nothing to reduce its confusing similarity with Avanadeís mark".

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has made no use of the name in connection with an active website, and mere assertions of intended future use do not, of themselves, establish legitimate rights.

Complainant states that because the disputed domain name contains no indication that it is used for a critical expression site, Respondent cannot demonstrate legitimate fair or noncommercial use.

Complainant indicates that Respondent has not been known by the disputed domain name, and has no other claim to rights or legitimate interests in the name.

Complainant asserts that the following facts are evidence of bad faith on the part of Respondent: (1) Respondent registered the disputed domain name on the day Complainantís formation was publicly announced, indicating that the registration was deliberately intended to trade on Complainantís goodwill; (2) the uniqueness of Complainantís mark indicates that Respondent did not derive the disputed domain name independently; (3) Respondentís knowledge of Complainantís mark suggests bad faith; (4) Respondentís failure to use the disputed domain name for over one year suggests the absence of an intention to use it in good faith; (5) Respondentís offer to sell the name to Complainant, while simultaneously announcing plans to use it to criticize Complainant, affirmatively demonstrates bad faith.

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

B. Respondent

Respondent refers to cases decided by administrative panels under the Policy that have found use of a mark in a domain name in connection with critical expression sites to constitute legitimate noncommercial or fair use.

Respondent "admit[s] the name is similar".

Respondent states "It is a non-profit Ďwatchdogí site about Avanade and its business practices".

Respondent indicates that federal courts in the United States have found Microsoft to have violated the Sherman Act, and that this makes its site "a necessity for information and commentary". Respondent indicates that Complainant, as a non-public company, will not be subject to disclosure rules associated with public companies, and that this increases the need for a forum to publicize critical views.

Respondent indicates that "An agent of Avanade called me on several occasions and asked if they could advertise on the site. I responded Ďnoí. They then said it would be for a non profit group, and then I said I would consider it. I was also asked if it was for sale, and responded negatively."

Respondent claims that offers for sale of the disputed domain name to Complainant from his e-mail address were undertaken by a "younger family member" without permission (see Factual Background, supra).

 

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. 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. Respondent has filed a detailed response to the complaint indicating that he received notice and was afforded an adequate opportunity to respond.

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 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.

As a preliminary matter, the Panel notes that Complainant sought leave to file a reply to Respondentís response to its complaint, and tendered such a reply to the Panel. Respondent rejoined with a tendered sur-reply. The Panel has decided not to accept the supplemental submissions. Respondentís response to Complainantís complaint did not assert facts or legal arguments that Complainant might not reasonably have anticipated. Respondentís sur-reply, tendered shortly after Complainantís reply, similarly raised no new facts or legal arguments, and is also not accepted.

It is well established that registration of a mark is not a prerequisite to establishing rights under the Policy, and that rights in a mark may be established under common law [1]. The Panel determines that Complainant has established common law rights in the service mark "AVANADE" in the United States. The mark is arbitrary and is determined to be distinctive without a showing of acquired secondary meaning. Complainant has used the mark extensively in commerce in the United States, including on the Internet. Complainant has been widely referred to in press reports by the "AVANADE" mark. Respondent has not presented any evidence to contradict Complainantís assertion of common law rights.

While application for trademark registration at the USPTO does not confer a presumption of rights in a mark, it is significant that Complainantís intent to use application for registration of the word mark "AVANADE" has been published for opposition, and that a notice of allowance has been issued by the USPTO. This indicates that the mark will be registered by the USPTO following Complainantís submission of a statement of use, [2] absent some extraordinary intervening event.

In addition, Complainantís "AVANADE" mark has been registered in several foreign countries, and this also is evidence of its rights in the mark.

Respondent has conceded that the disputed domain name <avanadeconsulting.com> is "similar" to Complainantís mark. According to Respondent, this similarity is accounted for by his intention to use the name to identify a website expressing critical views regarding Complainant. In light of Respondentís concession regarding similarity, the Panel will not provide a detailed comparison of the mark and disputed domain name. The Panel finds the mark and disputed domain name confusingly similar in light of (1) the arbitrary character of the mark, (2) the direct relationship between the added term "consulting" and Complainantís line of business, and (3) Respondentís deliberate adoption of Complainantís mark as evidenced by the timing of the registration of the domain name.

Complainant has met the burden of proving that Respondent is the registrant of a domain name that is identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration and use.

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your 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 services; or

(ii) you (as an individual, business, or other organization) 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 noncommercial 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. (Policy, paragraph 4(c))"

Respondent asserts rights or legitimate interests on the basis of his intention to use it to host a website where information and views critical of Complainantís business practices may be publicly aired.

Under paragraph 4(c)(iii) of the Policy, a respondent may establish rights or legitimate interests in a domain name based on the fact that "you are making a legitimate noncommercial or fair use of the domain name." In a period of more than a year between the registration of the disputed domain name and the initiation of this proceeding, Respondent posted no content on a website identified by the disputed domain name, and cannot be said to be "making" use of the domain name. In an earlier proceeding under the Policy, this sole panelist noted that a domain name registrant should not be expected to make immediate use of a domain name in connection with an expressive site, and that some reasonable time between registration and use may be anticipated [3]. The Panel does not, however, consider a period of more than one year to constitute a reasonable delay, particularly where the Respondent has offered no concrete evidence of preparations to use the name for the purpose indicated.

Moreover, the evidence of conduct in this case indicates that Respondentís motivation for registering the disputed domain name was not to create a critical expression site, but rather to sell the disputed domain name to Complainant. This demonstrated motivation, combined with Respondentís failure to use the disputed domain name, persuades the Panel that Respondent does not have legitimate noncommercial expressive interests in the disputed domain name.

Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in 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 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))

The evidence in this case indicates that Respondent (1) registered the disputed domain name on the day of the public announcement of Complainantís joint venture; (2) made no use of the name in connection with an active website, and (3) initiated contact with Complainant asking "are you avanadeconsulting too?". Respondentís initial contact is inconsistent with his subsequent contention that he knew well of Complainantís business, and intended to be critical of that business.

Having established his presence with Complainant and having received a cease and desist demand, Respondentís e-mail address then generated a "want to buy avanadeconsulting.com?" message. He suggested that a "friend" had the domain name for sale, indicated that it was otherwise intended for use in connection with a critical site, and indicated that the friend is "open to offers".

The Panel does not accept Respondentís claim that the offer for sale should be overlooked because, unknown to him, it was undertaken by a "younger family member". The course of conduct beginning with Respondentís initial contact is consistent with an intention to generate Complainantís interest in purchasing the name. The shift to "friend" and unidentified "family member" conveniently followed Respondentís receipt of a legal warning from Complainant.

The Panel finds that Respondent primarily registered and used the domain name in connection with an offer for sale to Complainant for consideration in excess of his out-of-pocket costs in connection with the name. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy.

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

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

 

7. Decision

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

 


 

Frederick M. Abbott
Sole Panelist

Dated: September 2, 2001

 


Footnotes:

1. See, e.g., Desert Schools Federal Credit Union v. Symlink Communications, llc, WIPO Case No. D2001-0528, decided July 4, 2001.

2. See J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition, ß 19:132 (4th ed. 1996 and updated).

3. Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, decided July 20, 2000.