WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gateway, Inc. v. Lorna Kang
Case No. D2003-0257
1. The Parties
The Complainant is Gateway, Inc., of California, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson of Chicago, Illinois, United States of America.
The Respondent is Lorna Kang, of Perak, Malaysia.
2. The Domain Name and Registrar
The disputed domain name, <gatewaycomputers.com> (the "Domain Name"), is registered with iHoldings.com Inc. d/b/a DotRegistrar.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2003. The Center transmitted its standard request for registrar verification by email to the Registrar the same day. The Registrar confirmed by email the same day that it was the registrar of the Domain Name, that the Respondent was the registrant, that the Uniform Domain Name Dispute Resolution Policy (the "Policy"), applied, that the Domain Name would remain locked during this proceeding, that the registration agreement was in English and that the Respondent had submitted in the registration agreement to the jurisdiction of the courts at the location of the Registrarís principal office. The Registrar also confirmed the Respondentís contact details. The Registrar noted, however, that it had not received a copy of the Complaint. The Center advised the Complainant of this deficiency by email of April 7, 2003, and the Complainant transmitted a copy of the Complainant to the Registrar by email the same day.
The Center verified on April 10, 2003, that the Complaint satisfied the formal requirements of 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").
The Center formally notified the Respondent of the Complaint in accordance with paragraphs 2(a) and 4(a) of the Rules on April 17, 2003, and the proceedings commenced on that date. In accordance with paragraph 5(a) of the Rules, the due date for the Response was May 7, 2003. The Respondent did not submit any response by that date and the Center gave the parties formal notification of the Respondentís default on May 9, 2003.
The Center appointed Jonathan Turner as the sole panelist in this matter on May 26, 2003. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
The Panel notes that in paragraph 15 of the Complaint the Complainant agrees to submit "to the jurisdiction of the courts in the principal office of the concerned registrar, Network Solutions, Inc." Although the wrong registrar is identified here, the Panel considers that the clear intent and meaning of the Complainant was to submit to the jurisdiction of the courts at the location of the principal office of the (actual) Registrar (which is at Miami, Florida, USA), and that the submission is to be interpreted accordingly. So interpreted the submission complies with the requirements of paragraphs 1 and 3(b)(xiii) of the Rules, given that the registration agreement provides for this jurisdiction in its clause 33.
Having reviewed the file, the Panel considers that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is a well-known supplier of computers under the name "Gateway" and has registered this name by itself or with additions such as "2000" as a trade mark in many countries, including Malaysia. The Complainant has used the mark "Gateway" since at least 1986. Between 1997 and 2001, the Complainant spent over US$1.2 billion advertising and promoting its "Gateway" marks and sold over US$38 billion of products and services under them. The Complainantís current use of the mark includes use of the domain names <gateway.com>, <gateway-computer.com> and <gateway-malaysia.com>, amongst others.
The Respondent registered the Domain Name on April 7, 2002, and caused it to resolve to a website, which displayed a solicitation for on-line gaming. On rejecting the offer, the viewer is apparently able to access the Complainantís website. However, until blocked by the Complainant, the Respondent presented the Complainantís website in a frame which was not apparent to the user, but which enabled the Respondent secretly to capture the credit card details of persons who ordered computers through the framed website.
5. Partiesí Contentions
The Complainant contends that the Domain Name is confusingly similar to the mark "Gateway" and similar marks in which it has rights; that the Respondent has no right or legitimate interest in respect of the Domain Name; and that it was registered and has been used in bad faith. The Complainant requests that the Domain Name be transferred to it.
As noted above, the Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove:
A. that the Domain Name is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
B. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
C. that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar to mark in which Complainant has rights
The Panel has no doubt that the Complainant has both registered and unregistered rights in the mark "Gateway". The Domain Name comprises this mark together with the generic word "computers" and the Panel considers that it is clearly confusingly similar to the mark. The internet is an international medium and it matters not that the Complainant has not registered "Gateway" by itself as a trade mark in Malaysia where the Respondent is located. In any case the Complainant has registered "GATEWAY 2000" in that country and the Panel considers that the Domain Name is also confusing similar to that mark. Furthermore, the Panel considers that the Domain Name is identical or confusingly similar to the mark "GATEWAY-COMPUTER.COM" in which the Complainant has unregistered rights by virtue of its use a web address.
B. Rights or Legitimate Interests
The Panel is satisfied that the Respondent has no rights or legitimate interests in the Domain Name. The use of the Domain Name made by the Respondent has been illegitimate for the reasons discussed under C below.
C. Registered and Used in Bad Faith
The Panel finds that the Domain has been used to exploit the Complainantís well-known mark in order to market online gaming and secretly to capture credit card details from persons buying computers from the Complainant. The Panel considers that this use is clearly in bad faith and infers that the Domain Name was registered in bad faith for this purpose. Indeed, the Panel regards this as the most egregious bad faith which he has so far encountered in connection with domain names.
The Complainant has a legitimate interest in the Domain Name and there is no reason to deny it the remedy of transfer.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <gatewaycomputers.com>, be transferred to the Complainant.
Dated: June 5, 2003