WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gateway, Inc. v. High Traffic Pro-Life Domains only $999
Case No. D2003-0261
1. The Parties
The Complainant is Gateway, Inc, California, of the United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson.
The Respondent is High Traffic Pro-Life Domains only $999, New York, of the United States of America.
2. The Domain Name and Registrar
The disputed domain name <gatewaycomputer.com> (the "domain name") is registered with eNom.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 5, 2003. On April 7, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On April 7, 2003, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a first amendment to the Complaint on April 29, 2003. In response to a second notification by the Center that the Complaint was administratively deficient, Complainant filed a second amendment to the Complaint on May 2, 2003. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for a response was May 25, 2003. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondentís default on May 27, 2003.
The Center appointed Maxim H. Waldbaum as the Sole Panelist in this matter on June 13, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a manufacturer and seller of computers and other computer related products. Complainant sells its products under the name and mark GATEWAY. The mark GATEWAY is a federally registered trademark in the United States and has been in continuous use since at least as early as 1986.
Complainantís official website is connected to the domain name <gateway.com>. Complainant also maintains and operates numerous other websites with similar domain names such as <gateway.net>, <gateway-computer.com> and <gatewaypcs.com>.
According to the Registrar, Respondent registered the domain name on April 7, 2002.
5. Partiesí Contentions
Complainant is the leading direct seller of computers, which it sells under the name and mark GATEWAY. Complainant owns and uses a family of GATEWAY marks that includes GATEWAY, GATEWAY 2000, <gateway.com>, <gateway.net> and other related marks. Complainantís mark GATEWAY is registered on the Principal Register in the U.S. for computer and computer related products purposes. In addition, Complainant has 221 other marks registered in the United States Trademark Office and other trademark offices around the world.
Complainant owns, uses and has numerous registered domain names that include the mark GATEWAY. Most notably, such registrations include <gateway.com>, <gateway-computers.com> and <gatewaypcs.com>.
Complainantís GATEWAY marks and the goodwill symbolized thereby are exceedingly valuable corporate assets of Complainant. In the five years from 1997 through 2001, Complainant invested more than US$1,200,000,000 in advertising and promoting the GATEWAY marks and sold more than US$38,000,000,000 in products and services under its GATEWAY marks.
The domain name consists of Complainantís GATEWAY mark in combination with the generic term for Complainantís principal product. As such, it is likely to be confused with Complainant and its GATEWAY marks and domain names.
Respondent is neither an authorized dealer or reseller of genuine GATEWAY computers, nor is it licensed or otherwise authorized in any way to use Complainantís GATEWAY marks or act on Complainantís behalf.
Respondent registered the domain name long after Complainantís adoption, use and registration of its GATEWAY marks and domain names. According to the Registrar, Respondent registered the domain name on April 7, 2002, whereas Complainant has done business under GATEWAY names and marks since at least as early as 1986.
The domain name resolves to a very offensive website with graphic images of aborted fetuses. Complainant believes that Respondent pointed the domain name to a website containing such offensive images with the hope that the potential adverse public reaction would cause Complainant to purchase the domain name from Respondent.
Furthermore, Respondent has incorporated into its WHOIS information the following message: "Buy this domain for $1000 or less." Such message presents a clear portrayal of an attempt to profit from Complainantís marks.
Respondent did not reply to Complainantís contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
Complainantís mark GATEWAY is a federally registered mark in the United States. Complainantís evidence shows that the mark has been in continuous use since at least as early as 1986. The mark GATEWAY is a famous mark in the computer and computer related products fields. The Panel thus finds that the mark GATEWAY is protected by federal and common law.
The Panel further finds that the domain name <gatewaycomputer.com> is confusingly similar to Complainantís mark. The domain name consists of two words. The first word contained in the domain name is identical to Complainantís mark GATEWAY. The second word contained in the domain name is the term for Complainantís principal product. Thus, the Panel finds that the domain name is confusingly similar to Complainantís mark.
B. Rights or Legitimate Interests
Respondent is not commonly known by the domain name and is not a licensee of Complainant or otherwise authorized to use any of Complainantís marks. Respondent has not used the domain name in connection with a bona fide offering of goods or services. Respondentís act of directing the domain name to a website containing graphically offensive images does not qualify as a bona fide offering of goods or services. Thus, a prima facie claim has been made by Complainant.
Respondentís failure to submit evidence of his rights or legitimate interests in the domain name allows the inference that the evidence would not have been favorable to Respondent.
Accordingly, the Panel finds that Respondent has no legitimate interests or rights in the domain name.
C. Registered and Used in Bad Faith
Respondent has not demonstrated a good faith use of the domain name. Instead, Respondent allegedly caused the domain name to resolve to a website displaying graphically offensive images. After the Complaint was filed, Respondent apparently took down the website to which the domain name resolved. However, regardless of whether the domain name resolves to a graphically offensive website or does not resolve to a website at all, such use of the domain name cannot be viewed as a good faith use of Complainantís mark.
In addition, the fact that Respondentís WHOIS information includes the message that Respondent is willing to sell various domain names, possibly including the domain name at issue, for the financial benefit of Respondent, further evidences bad faith.
Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith.
For the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <gatewaycomputer.com> be transferred to Complainant.
Maxim H. Waldbaum
Dated: June 27, 2003