WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gateway, Inc. v. Patrick Williamson

Case No. D2008-0053

 

1. The Parties

Complainant is Gateway, Inc., of United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.

Respondent is Patrick Williamson, of United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <gateeway.com> is registered with Interlink Co., Ltd.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2008. On January 15, 2008, the Center transmitted by email to Interlink Co., Ltd. a request for registrar verification in connection with the domain name at issue. On January 17, 2008, Interlink Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 January 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2008. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2008.

The Center appointed Ross Carson as the sole panelist in this matter on February 22, 2008. 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 the owner of trademark registrations for or including GATEWAY registered in over forty countries throughout the world. The registrations are in respect to goods in International Class 9, computers and computer peripherals, and/or in respect to services in International Class 35, retail store services featuring computers, computer software, computer peripherals; product demonstrations, and/or in respect to services in International Class 42 consulting, marketing assistance, and technical support for reseller of computers and computer peripherals. The registration dates of the trademarks for or including GATEWAY commence as early as 1992. The registered trademarks for or including GATEWAY registered in forty different countries referred to above all have registration dates which precede the date of registration of the domain name in dispute of June 27, 2004.

Complainant is the owner of eight registered trademarks in the United Kingdom for trademarks for or including GATEWAY. The UK trademarks are registered in relation to computers and computer peripherals or in relation to services in International Class 38. Complainant’s UK trademark registrations for or including GATEWAY were all registered in the UK prior to the date of registration of the domain name in dispute by the Respondent who is a resident of the United Kingdom.

Complainant is a national manufacturer and distributor of personal computers, consumer electronics products, enterprise systems, communication tools, applications, and a full complement of related products and services, with net sales reaching $3.9 billion in 2006. Since at least as early as 1986, long prior to Respondent’s registration of the domain name in dispute, Complainant adopted, and has continuously used and promoted since that adoption, a family of marks revolving around the central term GATEWAY in connection with computers and computer peripherals products and related services. Complainant has invested many millions of dollars in promoting its trademarks for or including GATEWAY and has sold many billions of dollars in products and services under its trademarks for or including GATEWAY.

Complainant also maintains a significant Internet presence through its website at <gateway.com>, which provides information about Complainant and its computers and computer-related products and services.

As a result of Complainant’s investment of its effort, money, skill and other resources, Complainant’s trademarks for or including GATEWAY are widely recognized as indicating goods and services emanating from Complainant, and have become widely known trademarks.

 

5. Parties’ Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant submits that the domain name in dispute, <gateeway.com >, is essentially identical and confusingly similar to Complainant’s registered trademarks for or including GATEWAY and its “www.gateway.com” website, with the only difference between the domain name in dispute and Complainant’s trademarks for or including GATEWAY being the doubling of the letter “e,” in order to attract Internet users who mistakenly type an extra letter when trying to reach Complainant’s “www.gateway.com” website. Deliberate misspelling of another’s trademark, or “typo-squatting” as it is commonly called, is not sufficient under the Policy to differentiate a domain name in dispute from the corresponding trademark. See Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971 (“Numerous panels in the past have found similarity to be present in the case of a deliberate misspelling of a mark ... by adding, deleting, substituting or reversing the order of letters in a mark”).

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that Respondent is neither an authorized dealer or reseller of genuine GATEWAY computers, nor is he licensed or otherwise authorized in any way to use Complainant’s trademarks for or including GATEWAY or act on Complainant’s behalf.

Complainant further submits that long after Complainant’s trademarks for or including GATEWAY became well-known and were registered in the United States and in at least forty other countries, Respondent registered the domain name in dispute without any prior rights or legitimate interest in the name GATEWAY. Respondent did not register the domain name in dispute until June 28, 2004, whereas Complainant had done business under the GATEWAY name for over 20 years since at least as early as 1986. Complainant’s registered trademarks for or including GATEWAY had been registered in over forty countries including the United Kingdom where the registrant of the domain name in dispute resides before the registration of the domain name in dispute by Respondent.

A.3 Registered and Used in Bad Faith

Complainant submits that based on the fame of Complainant’s GATEWAY trademarks, Respondent necessarily has actual knowledge of Complainant’s rights, as demonstrated by the content on the “www.premiercomputers.org” website to which Respondent redirects Internet visitors to the domain name in dispute. For example, on an internal page, there is a direct reference to GATEWAY brand computers: “Save On Top Name Desktops. Gateway, HP, Apple and More.” Moreover, in addition to such actual knowledge, Respondent had constructive notice of Complainant’s trademark rights in its GATEWAY trademarks by virtue of Complainant’s prior registrations in Great Britain.

Complainant further submits that Respondent’s actual and constructive knowledge of Complainant’s rights in its trademarks for or including GATEWAY constitutes evidence of Respondent’s registration and use in bad faith. See Dollar Rent A Car Inc. v. Albert Jackson, NAF Case No. 187421 (“Registration of a domain name, despite knowledge of complainant’s rights, is evidence of bad faith registration pursuant to Policy 4(a)(iii).”).

Complainant states that Respondent’s <gateeway.com> domain name resolves to a website at “www.premier-computers.org” which contains links and directs people to non-Gateway websites, including sites belonging to Complainant’s direct competitors such as Dell, HP, Lenovo, and Sony. Thus, Respondent is using the domain name in dispute to attract people who are interested in Complainant’s computers distinguished by Complainant’s trademark GATEWAY, and diverting them to sites advertising and selling non-Gateway computers. This is classic trademark infringement and unfair competition, and further demonstrates Respondents bad faith use of the domain name in dispute. See Baccarat SA v. Web Domain Names, WIPO Case No. D2006-0038 (“The disputed domain name links to a web-site that includes links to other commercial websites. The Panel finds that providing such links, the Respondent most likely obtains a financial return through visitors that were originally looking for the Complainant and its products.”).

Complainant states that Respondent’s typo-squatting alone constitutes evidence of registration and use in bad faith. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444. (“It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”); Old National Bancorp v. WatchMyDomain c/o Nick M., NAF Case No. 563651 (“Under the Policy, typosquatting is sufficient evidence of bad faith registration and use of the disputed domain names.”); National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. (“Typosquatting is inherently parasitic and of itself evidence of bad faith.”).

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this 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”.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) 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

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The fact that the Respondent did not submit a Response does not automatically result in a decision in favor of the Complainant. The failure of the Respondent to file a Response results in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy the Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which the Complainant has rights.

Complainant has established that it is registered as the owner of registered trademarks in over forty countries for trademarks for or including GATEWAY. The trademarks are registered for goods such as computers and computer peripherals and /or in association with services in International Classes 36, 38, and 42. Complainant’s registered trademarks include seven registered trademarks for or including GATEWAY registered in the United Kingdom the country in which the registered owner of the domain name in dispute appears to reside. Even though more relevant under the second and third element of the Policy, the Panel notes that Complainant’s registered trademarks were registered prior to the date of registration of the domain name in dispute on June 27, 2004.

The domain name in dispute <gateeway.com> is identical to Complainant’s registered trademarks for or including GATEWAY in sound and idea suggested by the trademark, but differs by the presence of the additional letter “e”. Respondent is involved in “typo-squatting”; the practice of using a domain name misspelling of Complainant’s widely known trademark. In Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362, the Panel found that the domain name <0xygen.com>, with a “Zero” in place of the letter “O” was calculated to trade on the complainant’s name by exploiting likely mistakes by users of the URL.

The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to Complainant’s registered trademarks for or including GATEWAY.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.

Respondent is not affiliated with the Complainant and has never been authorized by the Complainant to use Complainant’s registered trademarks or any trademarks confusingly similar thereto.

The web pages associated with the domain name in dispute display a series of sponsored links relating to computers and computer peripherals offered by competitors of Complainant. UDRP decisions have consistently found that registrants that “park” their domain name confusingly similar to a trademark using redirecting services have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain name in dispute. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for complainant to make a prima facie showing that respondent does not have any rights or legitimate interests in the domain name in dispute. Respondent did not file a Response and avail itself of the benefits of paragraph 4(c) of the Policy.

The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.

Domain Name Registered in Bad Faith

By reason of the long and extensive use of Complainant’s trademarks for or including GATEWAY and the extensive advertising of Complainant’s trademarks in association with the computers and computer peripherals and services for which the marks are registered, Complainant’s trademarks for or including GATEWAY were widely known prior to registration of the domain name in dispute on June 27, 2004. Complainant’s registered trademarks include seven registered trademarks for or including GATEWAY registered in the United Kingdom, the country in which the registered owner of the domain name in dispute appears to reside. Complainant’s registered trademarks were registered prior to the date of registration of the domain name in dispute on June 27, 2004.

The word “gateway” is a distinctive word relative to computers and computer peripherals. The domain name in dispute contains the entirety of Complainant’s trademark with the addition of the letter “e”. Respondent’s typo-squatting alone constitutes evidence of registration in bad faith. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (“It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”); Old National Bancorp v. WatchMyDomain c/o Nick M., NAF Case No. 563651 (“Under the Policy, typosquatting is sufficient evidence of bad faith registration and use of the disputed domain names.”).

The Panel finds that Respondent registered the domain name in dispute in bad faith.

Domain Name Used in Bad Faith.

Respondent’s <gateeway.com> domain name resolves to a website at “www.premier-computers.org” which contains links and directs people to non-Gateway websites, including sites belonging to Complainant’s direct competitors such as Dell, HP, Lenovo, and Sony. The Panel infers from Respondent’s typo-squatting and the content on Respondent’s website that Respondent is receiving pay-per-click payments for hits on the websites posted on the pages associated with the domain name in dispute.

Respondent is using the confusingly similar domain name <gateeway.com> to attract users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under paragraph 4(b)(iv) of the Policy.

The Panel finds that Respondent used the domain name in dispute in bad faith.

 

7. Decision

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, <gateeway.com> be transferred to Complainant.


Ross Carson
Sole Panelist

Date: March 7, 2008