WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cisco Technology, Inc. v. Matthew Archer, International Computer Purchasing Ltd
Case No. D2012-0563
1. The Parties
The Complainant is Cisco Technology, Inc. of San Jose, California, United States of America (“United States”), represented by Fenwick & West, LLP, United States.
The Respondent is Matthew Archer, International Computer Purchasing Ltd of Wilmslow, Cheshire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Hill Dickinson LLP, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <ciscosurplus.eu.com> (“the Domain Name”) is registered with CentralNic.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2012. On March 20, 2012, the Center transmitted by email to CentralNic and Namesco Limited, a request for registrar verification in connection with the Domain Name. On April 3, 2012, CentralNic transmitted by email to the Center verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name.
The Center verified that the Complaint and amended Complaints satisfied the formal requirements of the CentralNic Dispute Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “Rules”).
In response to communications from the Respondent of March 20 and March 22, 2012, the Complainant requested a suspension of the administrative proceeding in order to resume the CentralNic mediation process, and explore a settlement on March 22, 2012. The administrative proceeding was suspended on March 23, 2012. On April 2, 2012 the Complainant confirmed to the Center that the CentralNic mediation had terminated, and requested re-institution of the proceedings. On April 4, 2012, the proceedings were reinstituted.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2012.
On April 25, 2012, the Respondent transmitted its Response to the Center and to the Complainant’s representative. The Response requested the appointment of a three-member Administrative Panel. On May 4, 2012 the Complainant transmitted to the Center and to the Respondent’s representative a Supplemental Submission with a request that it be considered by the Panel.
The Center appointed William P. Knight, Jeffrey D. Steinhardt, and Knud Wallberg as panelists in this matter on May 23, 2012. The Panel finds that it was properly constituted. Each member of 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
The Complainant is a manufacturer and supplier of a wide array of products relating to networking and communications equipment and software, video conferencing systems, collaboration products, television set top boxes, digital video recorders, and video cameras as well as related services. It is now at the head of a group of corporations distributing its products and services throughout the world. The CISCO trademark has been in continuous use by the group since 1984 and the Complainant has numerous registrations of the mark in many countries, including registrations in Europe dating back to at least 1999. CISCO can properly be regarded as world famous mark.
The Respondent is in the business of procuring, refurbishing and remarketing high-end networking and server room equipment by manufacturers such as Cisco, Nokia (Checkpoint), Sun Microsystems, Nortel, Foundry, BlueCoat and Hewlett-Packard. It calls itself “ICP Limited”, although that is not its name. According to the publicly available WhoIs database, the Domain Name was registered by the Respondent on December 6, 2002 in the name of “ICP Limited”.
The first letter of demand in respect of the Domain Name was received by the Respondent from the Complainant’s attorneys in February of 2010.
At the time of filing the Complaint, the home page of the website for which the Respondent used the Domain Name was predominantly concerned with the Complainant’s products, but included prominent links to pages on the same website offering competing products of Nokia, Sun, Nortel, Foundry, BlueCoat and Juniper. These links have since been removed so that the website is now dedicated to the Complainant’s products alone.
5. Parties’ Contentions
The Complainant asserts, amongst other matters, that:
1. the Complainant is the owner of the CISCO registered trade marks from a date well before the registration of the Domain Name and has many domain names incorporating the trade mark;
2. the Domain Name is confusingly similar to the CISCO trade mark in that the dominant component of the Domain Name is the word “cisco” along with the generic suffix “surplus” incapable of distinguishing the Domain Name from the dominant impression created by the use of the trade mark of the Complainant;
3. the Respondent is not known by any name including the word “cisco”;
4. the Respondent has not been authorized by the Complainant to use of the CISCO trade mark in the Domain Name;
5. the website to which the Domain Name leads is not a bona fide offering by a reseller of the Complainant’s products in that the website, at the date the Complaint was filed, also offered competing products nor is it, in such circumstances, a legitimate noncommercial or fair use of the Domain Name; and
6. the real nature of the Respondent’s use of the Domain Name is to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the CISCO trade mark as to the source, sponsorship, affiliation or endorsement of that website and to facilitate the sale of goods and services not supplied by the Complainant.
As a consequence, the Complainant argues, the Domain Name is confusingly similar to the Complainant’s CISCO trade mark in circumstances where the Respondent has no legitimate interest in the Domain Name, such that both registration and subsequent use of the Domain Name was and is in bad faith, in the sense meant by the Policy.
In its Response, the Respondent counters the claims and conclusions of the Complainant as follows:
1. the Domain Name is not confusingly similar to the Complainant’s CISCO mark because it is used in a descriptive fashion to describe the Complainant’s own goods sold by the Respondent.
2. the Respondent has a legitimate interest in the Domain Name by virtue of it being an “authorized partner” of the Complainant entitled to sell its products; the Respondent relies upon the decision in Oki Data Americas, Inc. v ASD, Inc, WIPO Case No. D2001-0903 (“Oki Data”) in what follows in that regard.
3. before the Respondent received any notice of the dispute, the Respondent used the Domain Name in connection with a bona fide offering of the Complainant’s products, as contemplated by the Oki Data decision;
4. the fact that other services or goods are offered on the website under the Domain Name does not merit a finding adverse to the Respondent; the Respondent refers to Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, Marathon Enterprises, Inc. v. William I Bauer, WIPO Case No. D2007-1036 and Freni Brembo S.p.A v Webs We Weave, WIPO Case No. D2000-1717;
5. the Respondent offered to remove, and was in the process of removing, all references to competing products on the website under the Domain Name;
6. it is obvious from the website operating under the Domain Name that it is not operated by the Complainant and there is no suggestion that the Respondent has communicated improperly with the Complainant’s customers;
7. the Respondent registered the Domain Name over nine years ago in good faith and has invested money in marketing through the website under the Domain Name;
8. the Complainant is responsible for unconscionable delay in commencing this administrative proceeding, taking no steps to dispute the Respondent’s use of the Domain Name until February, 2010, and taking no further steps since then, during which it has allowed the Respondent to continue using and investing in the Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
A. Supplemental Submission
Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
As already observed, the Center received further submissions from the Complainant on May 4, 2012 with a request that the supplemental filing be accepted and considered by the Panel.
This supplemental filing was not requested by the Panel pursuant to paragraph 12 of the Rules. Paragraph 12 of the Rules makes it clear that the panel alone must decide whether it requires further statements or documents from either of the parties. There is no provision for a right of reply on the part of either party. Unless a compelling reason is presented, such as new facts relevant to the determination, that requires a response, it would be contrary to the objectives of the Policy and the Rules, that is to ensure a speedy and inexpensive determination of the relevant issues, to invite or allow supplementary pleadings and evidence. Each party is given a single opportunity to present everything of relevance and, if it fails to do so, there must be very compelling reasons to invite further contributions and then, usually, each party will be invited to do so, limited to the specific issue requiring clarification.
However, in this case, the fact that the Domain Name was registered in a name that was not that of the Respondent may justify the Complainant in being given a further opportunity to deal with the matters raised in the Response even if, had the Complaint been prepared more diligently, the Complainant may have dealt with all these issues in the Complaint itself. Accordingly the Panel will allow the Supplemental Submission in this exceptional circumstance, only for the purpose of adding facts relevant to this determination that may not have been included in the Complaint due to this circumstance. The Panel also notes that consideration of the Supplemental Submission will not delay proceedings since it was received by the Center prior to appointment of the Panel.
The additional matters to be considered stated in the Supplemental Submission are:
1. an entity that may be related to the Respondent, a United States company called Koz, Inc doing business as ICP Sales, became a Cisco “partner” for the first time in 2004. This relationship was terminated in 2009;
2. the Respondent “registered as a Cisco partner” on November 16, 2011;
3. the Complainant rather cryptically states “[t]he Cisco partnership agreement by which Respondent appears currently bound” prohibits the registration or use of any domain name incorporating, inter alia, the mark CISCO.
It is unsatisfactory that the Complainant has not offered any explanation as to why it delayed for such a long period after its letter of demand of February, 2010 before filing its Complaint in these proceedings. However, the Panel does not accept the Respondent’s argument that the Complainant’s delay in lodging a Complaint has resulted in its suffering any disadvantage. There is no evidence given by the Respondent as to any special investment devoted to the website under the Domain Name (which could be re-used in any event under a different domain name) or any special marketing expenses relating to it, let alone anything done by it in reliance upon the Complainant’s tardiness.
Be that as it may, the Panel accepts the consensus view of panelists on the issue of laches, acquiescence and delay set out in paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that “the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements. Panels have noted that the remedies under the UDRP are injunctive rather than compensatory in nature, and that a principal concern is to avoid ongoing or future confusion as to the source of communications, goods, or services.” There is simply insufficient evidence of any kind to justify a conclusion that any departure from this principle should be made in respect of this Complaint or the Policy in general
C. Substantive matters
1. Identical or Confusingly Similar
It is not disputed that the Complainant has relevant rights in the mark CISCO. The Panel is of the view that the addition of the generic word “surplus” and the addition of the second-level generic top level domain “.eu.com” does nothing to distinguish the Domain Name from the CISCO mark. The mark CISCO remains the predominant identifier within the Domain Name; indeed any domain name where a person’s well-known and distinctive trade mark is the first word could easily be taken by internet users to be the address of a website connected with and authorized by the trade mark owner.
Accordingly, this Panel finds that the Domain Name is confusingly similar to the Complainant’s mark.
2. Rights or Legitimate Interests
The Respondent relies upon the Oki Data decision, and also cites Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, Marathon Enterprises, Inc. v. William I Bauer, WIPO Case No. D2007-1036 and Freni Brembo S.p.A v Webs We Weave WIPO Case No. D2000-1717.
As the WIPO Overview 2.0, paragraph 2.3, relevantly notes on this issue:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
However: Some panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant's trademark (i.e., <trademark.tld>).”
However, in this case it is not necessary to decide between these two lines of authority because it is clear that, up until a time after the commencement of these proceedings, the Respondent offered third party and competing products on the website under the Domain Name, and these links to competing proceedings were a prominent part of the home page of the website (as evidenced in the annexes to the Complaint). This fact alone distinguishes all the authorities relied upon by the Respondent. For example, in the Dr. Ing. h.c. F. Porsche AG decision it was stated: “Clearly designated links to websites, under which other brands or products are offered, cannot be considered as the offering of other brands or products under the Domain Names, provided they take up only a minor part of the site and the overall impression of that site remains that of a site offering corresponding goods. Therefore, the present case does differ from those where a respondent is predominantly offering under a certain domain name goods and services non-related to that domain name.” In this Panel’s assessment, this exception clearly does not apply here.
The Panel accordingly concludes that, at the time of commencement of the proceedings, the presence of these prominent links to competing products on other parts of the website under the Domain Name supports the Panel’s ruling that the Respondent has failed to demonstrate rights or legitimate interests in the Domain Name.
3. Registered or Used in Bad Faith
In this case, the considerations relevant to the determination of the right or legitimate interest of the Respondent in the Domain Name are equally relevant to the issue of registration or use in bad faith, in the sense that those expressions are used in the Policy.
In respect of registration in bad faith, it must be noted that the Domain Name was registered in 2002 when it is common ground that neither the Respondent nor any entity that may have been related to it had any formal relationship with the Complainant or any entity associated with it.
However, in this Panel’s view it is clear that the Respondent chose the Domain Name because of its identity to the CISCO trade mark of the Complainant, clearly with the intention of deriving a commercial benefit of some kind, thus meeting the bad faith requirements in paragraph 4(b) of the Policy, whether the Respondent thought that was a reasonable thing to do or not. It is irrelevant that there may be other, similar domain names registered in the names of others, with or without authorization of the Complainant, as to which, in any event, the Panel has no information and cannot make any decision in these proceedings.
In respect of use in bad faith, the circumstances that the Domain Name was at all times up to the filing of the Complaint being used to offer competing goods and services, as well as the goods of the Complainant, equally demonstrates bad faith in the sense required by the Policy. The fact that the Complainant has altered its website since the commencement of these proceedings is not germane, amongst other reasons because, if left with the Domain Name the Respondent could change its website back again, or in some other way, in order to achieve its objectives of selling other goods and services, as well as those of the Complainant.
In these circumstances, the Panel concludes that Domain Name was registered and is being used in bad faith.
The Complainant has requested that the Domain Name be transferred to it. 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, <ciscosurplus.eu.com> be transferred to the Complainant.
William P. Knight
Jeffrey D. Steinhardt
Dated: May 29, 2012