WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

W.L Gore & Associates Inc. V. Bernie Bartholome

Case No. D2001-1347

 

1. The Parties

The Complainant is W.L Gore & Associates Inc., located at 551 Paper Mill Rd, PO Box 9206, Newark, Delaware 19714, United States of America.

Represented by: David J. Johns, Esq., Associate of w.l gore & associates inc., 551 Paper Mill Rd, PO Box 9206, Newark, Delaware 19714, United States of America.

The Respondent is Bernie Bartholome, 128 Production Court, Louisville, Kentucky 40299, United States of America.

Represented by: Representing itself.

 

2. The Domain Names and Registrar

The domain names at issue are: <goretexfilter.com>, <goretexfilters.com>, <goretexfilterbags.com> and <goretexbags.com>.

The Registrar is CORE, Inc., located at World Trade Center II, 29, route de Pré-Bois, CH-1215 Geneva Ė Switzerland.

 

3. Procedural History

The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on November 12, 2001, and in hard copy on November 14, 2001. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and that the payment required for this proceeding was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified to Respondent on November 28, 2001, according to Paragraph 2(a) of the Rules. Respondent was informed that the last day for filing its Response was December 18, 2001. No Response has been received. The Center issued to the Respondent a Notification of Respondent Default on December 20, 2001, informing Respondent of the consequences of its default.

The Panel has been properly constituted. The undersigned Sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. No further submissions were received by the Center or the Panel. Consequently, the date scheduled for the issuance of the Panelís Decision is January 25, 2002.

 

4. Factual Background

Complainant, W.L Gore & Associates, Inc. is a privately owned American company. Complainant is the worldwide leader in providing high-technology fabric for outdoor apparel and footwear, as well as products for electronic, industrial, and medical applications. Complainant has at all material times traded under the name W.L Gore & Associates, Inc.

Complainant is the proprietor of various trademarks of GORE® and GORE-TEX®, which are registered in the United States and used in a great number of countries throughout the world. The GORE-TEX® trademark was first filed as an actual use application in 1971 for several different products. One of these applications pertains to the filtration business and was registered in 1972 with the United States Patent and Trademark Office.

Since the registration, Complainant has spent millions of dollars in marketing, advertising, and promoting GORETEX® filter bags and cartridges. In the past twelve months alone, Complainant estimates to have spent over $200,000 in media communications around GORETEX® filter bags and cartridges. As a result of Complainantís activities, the GORE-TEX® trademarks became closely associated with Complainantís products when the disputed domain names at issue were registered on or about March 30, 2001. The GORE-TEX® trademarks are considered as well-known trademarks according to Article 6 bis of the Paris Convention in the majority of the Convention countries.

Complainant has established its main web site under the generic top level domain name <gore-tex.com> and <goretex.com>. Moreover, Complainant has established local web sites under country specific top level domain names for a great number of countries, such as <gore-tex.tm.se>, <gore-tex.tm.de>, <gore-tex.tm.fr>, <gore-tex.it>, and <gore-tex.co.uk>.

Respondent is a former customer of Complainant. The four domain names at issue all point to the web site <dusttown.com>, which is an "industry global network for clean air" created by an employee of Respondent. <dusttown.com> highlights dust collector manufacturers on the web site and sells filter bags and filter cartridges that are in direct competition with Complainantís filter bags and filter cartridges.

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondentís registration and use of the domain names at issue violate Complainantís rights in its various registered trademarks including GORE® and GORE-TEX®.

Complainant claims that the domain names at issue are identical or confusingly similar to Complainantís registered trademarks.

Complainant also claims that Respondent has no right or legitimate interest in respect of the domain names at issue. Complainant owns the registered trademarks GORE® and GORE-TEX® and has never given any consent, license or authorization to the Respondent for the use GORE® and GORE-TEX® as a trade or service mark or as any domain name content. Respondent is not otherwise known to Complainant or the public under any of the names in question.

Complainant further claims that Respondent has registered and is using the domain names in bad faith. Complainant alleges that there is no evidence that Respondent was unaware of Complainantís registered trademarks when Respondent registered the domain names at issue. Respondent disrupts Complainantís business and capitalizes on Complainant's goodwill by diverting internet users to Respondentís web site where Respondent sells filter bags and cartridges that directly compete with Complainantís filter bags and cartridges.

Complainant requests that the contested domain names be transferred to Complainant.

B. Respondent

The Respondent has submitted no Response.

 

6. Discussion and Findings

Paragraph 4a of the Policy requires that a respondent submit to a mandatory administrative proceeding if a complainant asserts that:

(i) 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

(ii) the 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.

In this case, even though Respondent filed no Response and offered no evidence attacking the Complainantís contentions, the Panel nevertheless reviews the evidence before it to determine whether Complainant has supported each of the above required elements in its contentions within the existing record.

6.1. Identity or Confusing Similarity

The Panel finds that the domain names in issue consist of the registered trademark GORE-TEX® followed by the words FILTER, FILTERS, FILTERBAGS, and BAGS, respectively. The Panel finds that the words FILTER, FILTERS, FILTERBAGS, and BAGS are general nouns. In Nokia Corporation v. Nokiagirls.com a.k.a. IBCC WIPO Case No. D2000-0102, the Panel found that the addition of a general noun such as "girls" added to the Complainantís trademark "Nokia" does not distinguish the domain name from the trademark of the Complainant.

Here, the words FILTER, FILTERS, FILTERBAGS, and BAGS do not distinguish the domain names at issue from Complainantís registered trademark GORE-TEX®. Therefore, for the purpose of Paragraph 4a(i) of the Policy, the Panel finds that the domain names at issue are essentially identical to or confusingly similar to Complainantís registered trademarks GORE® and GORE-TEX®.

6.2. Rights or Legitimate Interests

In connection with Paragraph 4a(ii) of the Policy, the Panel finds that Complainant exclusively owns the trademark registrations for GORE® and GORE-TEX®. Complainant has never given any consent, license or authorization to the Respondent for the use GORE® and GORE-TEX® as a trade or service mark or as any domain name content. Respondent is not otherwise known to Complainant or the public under any of the names in question. Further, Respondent has never sought Complainantís permission to use its registered trademarks GORE® and GORE-TEX®. In view of the above, the Panel finds that Respondent has no rights or legitimate interests with respect to the domain names at issue.

6.3. Bad Faith

The Panel notes that Paragraph 4a(iii) of the Policy will be satisfied only if the complainant proves that the domain name registration was undertaken in bad faith and that the circumstances of the case are such that the respondent is continuing to act in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003.

The Panel finds no evidence that Respondent was unaware of Complainantís GORE-TEX® trademarks when Respondent registered the domain names at issue. Complainant filed its first GORE-TEX® trademark registration as an actual use application in 1971 and several more GORE-TEX® trademarks in 1994 and 1995. Such registrations constitute constructive notices of the existence of the GORE-TEX® trademarks. In addition, Respondent is a former customer of Complainant and therefore very likely to be aware of Complainantís GORE-TEX® trademarks. Therefore, the Panel finds that Respondent registered the domain names at issue in bad faith.

With respect to the use of the domain names, the Panel finds that Respondent has used the domain names at issue by linking them to the web site of his own company (DUSTTOWN). Consequently, an internet user will be transported to Respondentís web site <dusttown.com> whenever the internet user attempts to locate Complainantís GORE-TEX® products. The Panel finds that such use of the domain names effectively exploits Complainantís well-known name fostered by the millions of dollars of marketing, advertising, and promotion that Complainant has invested in its GORE-TEX® trademarks and the associated products.

Moreover, Respondent sells, at its web site <dusttown.com>, filter bags and filter cartridges that directly compete with Complainantís filter bags and filter cartridges. The Panel finds that Respondentís use of the domain names at issue disrupts Complainantís business. Further, Respondentís use of these domain names creates a likelihood of confusion with the Complainantís GORE-TEX® trademarks as to the source, sponsorship, affiliation, or endorsement of Respondentís web site or of a product or service on Respondentís web site. Therefore, the Panel finds that Respondent has registered and is using the domain names at issue in bad faith.

 

7. Decision

Based on the above findings, the Panel concludes that (a) the domain names at issue are either identical or confusingly similar to Complainantís registered trademarks GORE® and GORE-TEX®, (b) Respondent has no rights or legitimate interest in the domain names at issue, and (c) Respondent has registered and is using the domain names in bad faith. Therefore, pursuant to Paragraph 4a of the Policy, the Panel orders that the domain names at issue be transferred to Complainant.

 


 

Charles E. Miller
Sole Panelist

Dated: January 17, 2002