WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
X/Open Company Limited v. unix.net
Case No. D2002-0296
1. The Parties
The Complainant in this administrative proceeding is X/Open Company Limited with its principal place of business at Apex Plaza, Block A 2nd Floor, Forbury Road, Reading, Berkshire RG1 1AX, United Kingdom. The Respondent is Unix.net whose address is P.O. Box 1071, Newport Beach, CA 92659, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <unix.net>. The domain name was registered by Respondent with Go Daddy Software Inc., 14455 North Hayden Road, Suite 219, Scottsdale, AZ 85260 United States of America.
3. Procedural History
On March 27, 2002, the WIPO Arbitration and Mediation Center received from the Complainant by e-mail a Complaint for a decision in accordance with the Uniform Policy for Domain Name Dispute Resolution Policy (the Policy). The Center received a hard copy of the Complaint on April 3, 2002. On April 3, 2002, the Center forwarded an Acknowledgement of Complaint to the Complainant. The Complainant originally named Network Solutions Inc. as the Registrar and filed an amendment to the Complaint on April 11, 2002, showing Go Daddy Software Inc. as the correct Registrar On April 11, 2002, the Center forwarded a Request for Registrar’s Verification to Go Daddy Software Inc. On April 11, 2002, the Registrar confirmed that the domain name <unix.net> was registered by the Respondent Unix.net. The Center completed its Administrative Compliance Check on April 22, 2002, and ascertained that the Complaint was filed in compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) Rules and with the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules)Supplemental Rules and that payment had been properly made to the Center.
On April 22, 2002, the Center forwarded a Notification of Complaint to the Respondent by e-mail and courier. The Center advised the Respondent that the Administrative Proceeding was commenced on April 22, 2002, and that a response was due by May 12, 2002. The Complainant in this proceeding elected for an Administrative Panel consisting of a single panelist. No Response was received by the deadline for response. A Notification of Respondent's Default was forwarded to the Respondent on May 14, 2002.
Mr. Ross Carson was appointed as the sole Panelist and a Notification of Appointment of Administrative Panel and Projected Decision Date of June 24, 2002, was issued by the Center on June 10, 2002. The case file was transmitted to the Panelist Mr. Ross Carson on June 10, 2002.
4. Factual Background
Complainant X/Open Company Limited is a software technology company involved in the development of all operating systems, specifically a comprehensive open systems environment.
Complainant is the owner of the trademark UNIX world-wide ("UNIX Marks"). X-Open used to be the exclusive licensee of the UNIX marks. Under the terms of the license agreement X/Open had the option to have the UNIX marks assigned to it. X/Open exercised its right and is now the registered owner of the UNIX Marks.
The Complainant is the owner of registrations or pending applications for UNIX in relation to computer programs, computer related goods and computer related services in over seventy-five countries throughout the world (Annex 3, pages 22 to 34). Copies of signed License Agreements between X/Open and a number of licensees are attached marked as Annex 4. Among the licensees of X/Open are most of the leading computer companies of the world including Unisys Corporation, Siemens Nixdorf Informationssysteme AG, Sun Microsystems, Inc., Novell Inc., Hewlett-Packard Company, AT & T Global Information Solutions, Bull S.A., International Business Machines Corporation (IBM), Digital Equipment Corporation, The Santa Cruz Operation, Inc., Hitachi Limited, Silicon Graphics, Inc., Stratus Computer, Inc., Dansk Data Elektronik A/S, Fujitsu Limited, NEC Corporation and NCR Corporation. X/Open, its predecessors in business, and licensees have made extensive use of the trademark UNIX throughout the world in respect of computer operating systems, computer related goods and computer related services. The extent of use of the mark UNIX is so extensive that most major companies in the computer field are an approved user of the trademark UNIX.
5. Parties’ Contentions
A. Complainant contends that
(a) The disputed domain name is identical to the Complainant’s UNIX Marks. The .net part of the domain name should be disregarded as being of a generic nature.
(b) Respondent has no rights or legitimate interests in the domain name. The word UNIX is an invented word used in relation to computer software. UNIX is not a name which traders would legitimately choose unless to create an impression of an association with the Complainant. Complainant has not licensed or otherwise permitted the Respondent to use any of the UNIX marks nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of the UNIX marks.
(c) The domain name has been registered in bad faith.
Complainant’s UNIX marks are very well known and it is extremely unlikely that Respondent would not have been aware of that.
By virtue of the widespread use and reputation of the UNIX trade mark, members of the public and persons in the industry would believe that the entity owning the domain name <unix.net> was the Complainant or was in some way associated with or connected with the Complainant.
Any use of the domain name must misrepresent an association with Complainant.
By using the domain name the Respondent has intentionally attempted to attract for financial gain Internet users to its web site by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of its web site and/or the products or services offered on its web site.
The domain name currently resolves to a web site hosting "Unix.net UNIX Resources for UNIX Professionals and those just learning UNIX alike". Registered users of the web site may post messages relating to the UNIX operating system to a discussion forum.
The web site is set up to have pages dedicated to Services and Products which will be offered by the Respondent. These pages are currently under construction and do not offer products or services. However, these pages make clear that it is the intention of the Respondent to commence offering products and services on the web site.
Respondent offered at the time of filing the Complaint "a variety of webhosting services ranging in prices".
Complainant submits that Respondent is attempting to attract Internet users to the web site by use of the UNIX trade mark. Complainant further submits that Internet users will believe the domain name is owned and the web site is operated by or authorized by the Complainant. They will be encouraged to use the Respondent's webhosting services because of the Complainant's reputation in the name UNIX. The confusion will result in financial gain for the Respondent.
The Respondent has also used the UNIX name as a meta tag Keyword. A print out of the web site and a print out of the underlying source code showing the met tags are attached to the Complaint as Annex 6. An internet user inputting UNIX into a search engine will be likely to get the <unix.net> web site within their search results and will be confused into thinking that the web site is operated by or authorized by the Complaint.
The Respondent did not file a Response.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "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".
In accordance with Paragraph 4(a) of the Policy, the Complainant has the burden of proving three elements:
(1) That the Complainant has rights in a trademark or service mark with which the Respondent's Domain Name is identical or confusingly similar;
(2) That the Respondent has no rights or legitimate interests in the Domain Name; and
(3) That the Domain Name has been registered and is being used in bad faith.
6.1 The first issue is whether the Complainant had rights in a trademark or service mark and whether the domain name in dispute <unix.net> is identical or confusingly similar to that mark.
The trademark UNIX is a created word. The trademark is a trademark of substantial inherent distinctiveness. The trademark UNIX is a registered trademark or pending trademark application in seventy-five or more countries throughout the world. The domain name in dispute is comprised of the trademark UNIX followed by .NET to create a top level domain name.
The Panel finds that the domain name in dispute is confusingly similar to Complainant's trademark.
6.2 The second matter which the Complainant must prove is that the Respondent has no rights or legitimate interest in the domain name in dispute.
The word UNIX is an invented or created word used in relation to an open computer system. The trademark is licensed by the Complainant to authorized users of the system. The Respondent is not authorized by the Complainant to use the trademark UNIX. The Respondent failed to file any evidence that might lead the Panel to the inference that the Respondent has rights or a legitimate interest in the domain name.
The Panel finds on a balance of probabilities that the Respondent has no rights or legitimate interest in the domain name in dispute.
6.3 The third matter which the Complainant must prove is that the domain name has been registered and is used in bad faith.
The trademark UNIX was registered in many countries and used by licensees throughout the world well before adoption of the domain name in dispute by the Respondent. The Panel finds that the Respondent was aware of the Complainant's trademark UNIX before adoption of the domain name in dispute.
The trademark UNIX is in widespread use and well known as an operating system. Members of the public as well as persons in the industry would believe that the entity owning the domain name <unix.net> was the Complainant or a person licensed by or otherwise associated with the Complainant. The Respondent at the date of the Complaint offered "a variety of webhosting services ranging in price". The web site listed some of the services on offer and invited Internet users to e-mail for a free quote.
One of the co-owners of the domain name describes one of his qualifications as a web designer which amounts to promotion of web design capabilities at the web site.
The Panel concludes that by using the domain name in dispute the Respondent has attempted to attract Internet users to the web site for webhosting or web design for commercial gain by creating a likelihood of confusion with the Complainant's mark as to sponsorship or endorsement of the web site or the services offered on the web site which constitutes use in bad faith. (Uniform Domain Name Dispute Resolution Policy, Para 4.b(iv)).
For the foregoing reasons, the Panel decides:
(a) That the domain name registered by the Respondent is confusingly similar to the trademark to which the Complainant has rights;
(b) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The Respondent's domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <unix.net> be transferred to the Complainant.
Date: June 24, 2002