WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Gateway Inc. v. Texas International Property Associates
Case No. D2008-0062
1. The Parties
Complainant is Gateway Inc., of Irvine, California, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Texas International Property Associates, of Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Names and Registrar
The disputed domain names <gatemway.com> and <gatetway.com> (the “Domain Names”) are registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2008. On January 16, 2008, the Center transmitted by e-mail to Compana LLC a request for registrar verification in connection with the Domain Names at issue. On January 22, 2008, Compana LLC transmitted by e-mail to the Center its verification response confirming that 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. The Response was filed with the Center on February 12, 2008.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 3, 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.
Complainant submitted an unsolicited Supplemental Filing titled: “Reply in Support of Complaint” on February 26, 2008. In its discretion, the Panel has decided to consider this submission.
4. Factual Background
Complainant manufactures and distributes personal computers, consumer electronics products, communication tools, and other items, and offers an array of related services, under the GATEWAY mark. Complainant’s sales reportedly were $3.9 billion in 2006.
Since 1986, Complainant has used the GATEWAY mark to identify and distinguish the source of its goods and services. Complainant holds numerous registered trademarks, in the United States of America and in dozens of other countries, centered around the word “gateway”. Complainant’s principal Internet address is “www.gateway.com”.
Complainant asserts that the GATEWAY mark is famous, and there is no real dispute about this.
Respondent registered the Domain Names on December 10, 2004 and December 20, 2005. The Domain Names resolve to websites which contain links to websites belonging to Complainant’s direct competitors, such as Dell, Sony, and Toshiba.
The web page printouts annexed to the Complaint show that the “www.gatemway.com” website contains pages which state at the top “Welcome to gatemway.com”. Immediately below this welcome message is the phrase “For resources and information on Dell and Compaq”. One page at this website then contains several hyperlinks to various websites offering Dell products, and the hyperlinks are identified as Dell-related sites by Respondent’s web page. Similar pages at the site prominently feature links to Sony, Toshiba, and HP computer products. (There is also a similar page linking to Complainant’s site.) At the bottom of the pages on Respondent’s site is the copyright notice “© 2008 gatemway.com” and the statement “All rights reserved”.
There are similar pages annexed to the Complaint reflecting the web pages featured at the “www.gatetway.com” site.
5. Parties’ Contentions
A. The Complaint
Complainant alleges that Respondent is not an authorized dealer or reseller of Complainant’s computers, and is not licensed or otherwise authorized to use the GATEWAY mark.
Complainant alleges that the Domain Names are instances of “typo-squatting”, a practice repeatedly condemned under the Policy. Complainant cites Florida Department of Management Services v. Domain Park Limited, WIPO Case No. D2007-1587 (Dec. 20, 2007), in which the panel held that the registrant of <myhflorida.com> had engaged in the “parasitic” practice of siphoning off Internet traffic from its intended destination through typo-squatting on the MY FLORIDA mark.
According to the Complaint and exhibits annexed thereto, Respondent’s bad faith registration and use of the Domain Names is manifest because the Domain Names resolve to websites that contain links to the sites of Complainant’s direct competitors, such as Dell, Sony, and Toshiba.
Complainant also alleges, and supports with web page printouts, that Respondent had actual knowledge of the GATEWAY mark, by virtue of internal pages at both of Respondent’s websites which include “prominent links to the ‘Gateway.com Official Site’ at “Gateway.com”. The Complaint also includes an allegation that Respondent had constructive knowledge of the GATEWAY mark by virtue of the mark’s registered status.
Complainant seeks transfer of the Domain Names.
B. The Response
Respondent asserts that the <gatetway.com> and <gatemway.com> Domain Names are “slight misspellings of the generic noun ‘gateway.’” According to Dictionary.com, the term “gateway” means:
1. an entrance or passage that may be closed by a gate
2. a structure for enclosing such an opening or entrance
3. any passage by or point at which a region may be entered:
New York soon became the gateway to America
4. software or hardware that links two computer networks
In this case, Respondent urges, the misspellings do not intrinsically call to mind Complainant or its products, but constitute “a clever combination of the generic word gateway with acronyms for ‘motorway’ and ‘transit-way,’ which are consistent with the idea of entry points onto the ‘information superhighway’ as the Internet is sometimes called”. Respondent further submits that many people have used “gateway” as a term in connection with commerce over the Internet, and hence Complainant has no legitimate right to exclude all users from the use of that ordinary common term.
In this vein, Respondent cites various decisions including Zero International Holding GmbH & Co. Kommanditgesellschaft v. Beyonet Services and Stephen Urich, WIPO Case No. D2000-0161 (May 12, 2000); Miller Brewing Company v. Yunju Hong, NAF Case No. 192732 (Dec. 8, 2003); and Churrascaria Porc„o Ltda. v. Prime Products International, Inc., WIPO Case No. D2001-0535 (July 6, 2001).
Respondent asserts that it is the registrant of thousands of domain names, and that names such as those in dispute provide natural portal pages for access to Respondent’s holdings. According to Respondent, the current web pages to which these Domain Names resolve are “merely temporary and not intended to be the ultimate use” of the Domain Names. The links in question are provided pursuant to Google’s terms and are triggered by search requests entered by computer users. There is allegedly no intent on Respondent’s part to target Complainant. Respondent claims that it has no control over what terms advertisers bid on at Google and what terms appear on its website. Respondent also claims that it has requested that any computer-related links appearing on either of the subject websites be removed.
In this connection, Respondent cites authority for the proposition that the domain name holder is not responsible for the potentially offending content where they have contracts with third parties, such as Google or Yahoo, who control the content. See Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241 (June 4, 2005) (“the Panel accepts that the terms under which Google makes its Adsense advertisements available do not permit the Respondent to control them . . .”); Experimental Aircraft Association (EAA) v. EAA.COM, NAF Case No. 206309 (Dec. 16, 2003) (“brief appearance of aviation links on respondent’s websites was automatically provided by a pay-per-click search engine provider…”).
C. Complainant’s Reply
As noted above, the Panel in its discretion has decided to consider Complainant’s Reply submission. This is largely because the Reply responds to some apparently unanticipated, though ultimately implausible and untenable, assertions of fact and argument by Respondent. The information supplied in the Reply has turned out to be important to the merits of this case.
In any event, the Panel must say that much of what is contained in Complainant’s lengthy Reply could – and should – have been addressed by Complainant in the original Complaint. For instance, it would not have been difficult to point out, as was finally accomplished in the Reply, that Respondent is something of a serial cybersquatter, having been held in bad faith under the Policy in numerous prior cases, and that Respondent’s basic modus operandi has met with opprobrium on numerous prior occasions. Indeed, without the benefit of this and other information contained in the Reply (all of which the Panel had the discretion to disregard, or indeed insofar as the Respondent’s prior case history is concerned to obtain through its own limited research of publicly accessible records), this case could have been a much closer call.
In any event, in the Reply, Complainant presents an imposing catalogue of prior cases under the Policy in which this Respondent was held in bad faith, claiming on the strength of these numerous prior decisions that “Respondent is in fact a serial typosquatter”.
The Reply also contains a discussion of prior decisions rejecting the argument made here by Respondent that one is not responsible for the content of one’s web pages because of a contract with Google or another third party.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
Complainant clearly has rights in the GATEWAY mark through registration and use, all of which is well established in the record. Indeed, there can be little doubt that Complainant’s mark is famous.
The Domain Names differ materially from the GATEWAY mark only insofar as each Domain Name adds a letter in the middle of the word, yielding the second-level domains “gatemway” and “gatetway”. In the Panel’s view, these differences are too slight to avoid the conclusion that there is confusing similarity between the mark and the Domain Names. See Wal-Mart Stores, Inc. v. Jason Banks, WIPO Case No. D2007-0266 (Apr. 19, 2007) (holding that <waljmart.com> and <walmzart.com> are confusingly similar to the WAL-MART mark).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001).
Respondent was not licensed or authorized by Complainant to use the latter’s mark in any manner. Nor is there any evidence that Respondent is commonly known by the Domain Names.
Rather, Respondent claims that the genesis of the Domain Names was “an ingenious play on words related to the transportation metaphor commonly used to describe the Internet as an ‘information superhighway.’” The Panel simply cannot accept that explanation as true. First, there is scant support for the proposition that “mway” and “tway” enjoy much Internet currency as acronyms for “motorway” and “transit-way”. The implausibility exceeds the breaking point when one adds the prefix “gate”, such that “gatemway” and “gatetway” are supposed to conjure up images of an on-ramp to the information superhighway.
Second, it is difficult to credit Respondent’s explanation of an “ingenious”, and presumably innocuous, play on words when Respondent’s actual websites prominently and promptly offer to send the visitor to a Dell website or a Sony website. (As will be discussed below, the Panel rejects Respondent’s attempt to shift the blame for the website content onto Google. Rather, Respondent must take responsibility for the content of the sites to which the Domain Names resolve.)
Third, the credibility of Respondent’s story is severely tarnished by the fact that Respondent has been found in bad faith on numerous prior occasions under the Policy. For example, in SurePayroll, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0464 (June 9, 2007), the panel had no difficulty transferring two domain names registered by Respondent. The panel observed: “The Panel finds it unbelievable that Respondent independently choose words from the dictionary and modified them to create the Disputed Domain Names. Rather, the Disputed Domain Names appear to be systematic typos based on the SUREPAYROLL Marks.”
Similarly, in The Southern Company v. Texas International Property Associates, WIPO Case No. D2007-0773 (Aug. 24, 2007), the panel found Respondent was acting in bad faith. There, the panel wrote:
Respondent, with no apparent preexisting connection to the name Southern Company, registered two Domain Names looking and sounding nearly identical to Complainant’s registered trademark and to Complainant’s registered domain name, <southerncompany.com>, but with slight misspellings—“sothern” instead of “southern” and “copany” instead of “company”. With those misspellings, Respondent has not actually registered and used common generic or descriptive words, as it contends. “Sothern” and “Copany” are not common words at all. Rather, Respondent has adopted misspelled versions not only of Complainant’s registered trademark and service mark but also Complainant’s registered domain name — which Complainant apparently registered first. Inasmuch as there is no apparent reason that an Internet user would intentionally seek or enter domain names using the erroneous spellings “sothern” or “copany”, the reasonable inference is that the only reason for Respondent to adopt the Domain Names was to exploit the similarity to Complainant’s marks and domain name and the possibility of users making mistakes when trying to reach Complainant’s website.
There are many other decisions condemning this Respondent’s conduct, some of which also observe that Respondent has been routinely held in bad faith under the Policy. See, e.g., Schweizerische RŁckversicherungs-Gesellschaft v. Texas International Property Associates – NA NA, WIPO Case No. D2007-1455 (Dec. 13, 2007) (Respondent “seems to have quite a history as cyber squatter and typo squatter”; “The nearly identical (and clearly confusingly similar) disputed Domain Name resolves to ‘pay-per-click’ landing page from which revenue is presumably derived; the intention is evidently to free-ride on the fame of the SWISS RE mark ”).
Respondent also argues that it has the right to register and use “gateway”-formative domain names because “gateway” is a common word. Respondent’s main theme, though articulated in the “bad faith” section of the Response, is captured in the following statement: “[H]aving demonstrated that Complainant’s alleged mark is generic and/or merely descriptive, it must follow that Respondent did not register, and is not using, the disputed domain names in bad faith.”
This is incorrect on at least two counts. First, Complainant’s GATEWAY mark is by no means generic or descriptive, merely because “gateway” is also a common word. The word “gateway” is not a synonym for computer, and is not merely descriptive of a computer. Second, even if the GATEWAY mark were as weak as Respondent would urge, it does not necessarily follow that Respondent is incapable of bad faith registration and use.
Respondent overstates the prevailing view in the area of “common word” domain name rights. The prevailing view under the Policy is that, while the commonness of a trademarked word may, in some settings, be relevant to various issues under the Policy, that commonness is not a “get out of jail free” card inuring to the benefit of the respondent.
The mere fact that the characters comprising a second-level domain spell out a common word does not end the inquiry. The context matters. The evidence of the respondent’s motives, to the extent that can be ascertained through the expedited proceedings under the Policy, can make a difference. The use to which a respondent puts the domain name may shed light on such motives. The fame of the mark – even if the mark itself is also a common word – can also make a difference.
To make this point about context particularly germane here, one may rightly observe that a genuine pomologist could legitimately have registered <apple.com> to host a website featuring apples and apple trees, but that same pomologist would have run afoul of the Policy by registering that <apple.com> solely to derive revenue by linking it to websites selling Gateway or Dell computers.
Because context does matter, the cases cited by Respondent in support of its “common word” theme are not very elucidating here. In the Zero International Holding case, supra, the American respondent who owned <zero.com> had never heard of the German complainant or its “ZERO” mark. Moreover, the respondent did not use the domain name to resolve to a website that generated revenues by linking to various commercial websites, including websites of the complainant’s competitors. Rather, the domain name was put to largely personal use.
Similarly, in the Miller Brewing Company case, supra, there was no evidence that the respondent owner of <highlife.com> had used the domain name to link to a website marketing beer or related products. In the case of Eastbay Corporation v. VerandaGlobal.com, Inc., NAF Case No. 105983, there was no evidence that the respondent was aware of the complainant’s “FINAL SCORE” mark – one which the panel expressly refused to find “so famous [that] Respondent is presumed to have knowledge of it”.
In the instant case, by contrast, there is no question that the GATEWAY mark is a well-known mark, and that Respondent was aware of it. As was noted above, Respondent’s story about creating “an ingenious play on words related to the transportation metaphor commonly used to describe the Internet as an ‘information superhighway’” has been rejected by the Panel as unbelievable. Respondent makes money off of the Domain Names through portal sites that drive Internet traffic to the websites of Complainant’s competitors. These facts, taken together, are more than enough to distinguish the “common word” cases cited in the Response.
In sum, Respondent’s asserted motive for registering the Domain Names lacks credibility, and the other arguments Respondent raises in support of its claimed rights or legitimate interests are rejected.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of each Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Complainant relies chiefly on paragraph 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument. The Panel agrees that Respondent meets the bad faith standard of paragraph 4(b)(iv).
Much of the discussion in section 6.B. above (“rights or legitimate interests”) applies with equal force here to confirm Respondent’s bad faith registration and use of the Domain Names. The Panel will not repeat, but will incorporate, that discussion into this section 6.C.
The Panel finds it very likely that Respondent was well aware of the GATEWAY mark at the time it registered the Domain Names. First, as noted above, Respondent’s websites contain links to the main GATEWAY website. Second, GATEWAY is a famous mark in the Panel’s estimation. Third, Respondent’s pervasive activity with domain names permits the easy inference that Respondent was aware of a leading computer manufacturer like Complainant and its wares. Finally, Respondent does not deny that it was aware of the GATEWAY mark.1
Respondent appears to derive advertising revenues from its activities. These activities include the linkage of the Domain Names to portal sites where the websites of Complainant’s competitors are readily accessed. This conduct constitutes diversion of Internet traffic for commercial gain through the creation of likely confusion between Complainant’s mark and Respondent’s Domain Names and their corresponding websites, in violation of Policy paragraph 4(b)(iv).
Respondent’s websites contain statements suggesting Respondent’s affirmative endorsement of the site content, including the links to commercial sites featuring the products of Complainant’s competitors. In addition to the welcome message, there is the copyright notice discussed above which, one may reasonably conclude, reflects Respondent’s assertion of a proprietary interest in the content of the website.
Respondent argues that it should not be held responsible for the allegedly infringing content of the websites. In Respondent’s words, “panels have recognized that the domain name holder is not responsible for the potentially offending content where they have contracts with third parties, such as Google or Yahoo, that control the content”. The cases cited by Respondent in support of its “Google made me do it” argument are both distinguishable and outnumbered by other, and more recent, decisions under the Policy.
In the Admiral Insurance case, supra, cited by Respondent, the panel ruled that the respondent there was unaware of the complainant insurance company’s alleged trademark rights in the ELEPHANT mark at the time he registered <elephant.com>. As such, the panel’s comments regarding the Google advertising arrangement were not essential to that decision. It also bears noting that, whereas one might have been understandably ignorant of the complainant insurer’s recently-adopted use of its ELEPHANT mark, Respondent in the instant case cannot plausibly deny knowledge of Complainant’s GATEWAY mark. The GATEWAY mark is longstanding, famous, and pervasive in the general field of activity -- computer-driven commerce -- in which Respondent operates.
For similar reasons, the other case cited by Respondent, Experimental Aircraft Association, supra, may be distinguished from the present case. That case involved <eaa.com>, a domain name whose dominant letters, EAA, constitute the abbreviation of innumerable organizations. The panel in that case noted that there was no evidence that, at the time he registered the domain name, the respondent had ever heard of the complainant group or its mark. The panel also observed: “[S]ince there is no evidence that [r]espondent’s business is in connection with aviation, we do not find that the [r]espondent had a duty to be aware of [c]omplainant’s mark.” Again, Respondent in the present case can make no such claim.
In any event, even if not entirely distinguishable from the present case, the Admiral Insurance and Experimental Aircraft decisions do not represent the majority view on the broader issue of responsibility for website content driven by parties other than the respondent. Numerous decisions, including some cited by Complainant in its Reply, support the view that a respondent is ultimately responsible for the content at its website, even if that content is posted by a third party.
For instance, in Grisoft s.r.o. v. Original Web Ventures, Inc., WIPO Case No. D2006-1381 (Mar. 5, 2007), the panel observed:
Although the web pages were automatically generated by DomainSponsor’s software on the basis of searches made by visitors, this system is inherently likely to result in the display of sponsored links in the field in which a company whose mark corresponds to the domain name is active, including that company’s competitors. It is thus a system which is likely to enable the registrant to obtain click-through commissions from the diversion of internet users who are confused where (as here) the second level domain (“SLD”) is identical to the mark of a company which has been used on a substantial scale for a number of years.
The [r]espondent is ultimately responsible for the content of the website generated by DomainSponsor’s technology.
See also Starwood Hotels & Resorts Worldwide, Inc., Sheraton, LLC, and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254 (Oct. 23, 2007) (“The respondent remains ultimately accountable for the use of his [d]omain [n]ames, even if an employee (or, more likely, an algorithm) of an online affiliate advertising network selected the particular advertisements to display”); Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448 (December 14, 2007) (involving this Respondent).
The Panel here agrees with the more recent decisions which reject the proposition that a respondent may avoid responsibility for site content by hiding behind an arrangement with a third party. For purposes of the Policy, Respondent is responsible for the infringing links on its websites.
Accordingly, because bad faith registration and use exists under paragraph 4(b)(iv),2 the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
For all of the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <gatemway.com> and <gatetway.com> be transferred to Complainant.
Robert A. Badgley
Dated: April 9, 2008