WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Genesta v. Matthew Boardman

Case No. D2003-0425

 

1. The Parties

The Complainant is Genesta, a partnership organized under the laws of the State of Texas, with its principal place of business in Rockwall, Texas, United States of America ("USA").

The Respondent is Matthew Boardman whose address is in Somerset, New Jersey, U.S.A.

 

2. The Domain Name and Registrar

The domain name at issue is <genesta.com> (the "Domain Name"). The registrar is Network Solutions, Inc. (the "Registrar") located in Herndon, Virginia, USA.

 

3. Procedural History

On June 4, 2003, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of the Complainant via email. On June 5, 2003, the Center sent an Acknowledgment of Receipt of Complaint to the Complainant. On June 6, 2003, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On June 10, 2003, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On June 11, 2003, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On July 2, 2003, the Center advised the Respondent that it was in default for failing to file its Response. No Response has been received.

On July 10, 2003, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

The Complainant is a partnership organized under the laws of Texas and does business under the name GENESTA. The Complainant began doing business as GENESTA in April 2000. A copy of the main source module for a product called RFLEX shows use of GENESTA as of April 1, 2000. Since April 2000, the Complainant has been using the name GENESTA as a tradename to sell goods and services to the general public. In addition, the Complainant began using the name GENESTA as a trademark in June 2000 in connection with the goods as described above.

The Complainant is the owner of the trademark "GENESTA." The Complainantís trademark rights have accrued through use of the mark on the Internet in connection with application and system integrator for Symbol, Intermec, and Cisco products at <genesta.net> since June of 2000. As a result of this use, the Complainant has acquired rights in the mark.

In addition, the Complainant applied for a Federal Trademark Registration of the mark GENESTA (Application Serial No. 78/205189) on January 20, 2003, for use on computer software for data collection, specifically in the areas of RFID, bar code scanning and speech recognition, based on actual use in commerce as early as June 1, 2000.

The Respondent acquired the Domain Name <genesta.com> in May 29, 2000. On June 1, 2000, the Complainant contacted the Respondent and offered to buy the Domain Name. The Respondent declined the Complainantís offer.

On June 10, 2000, the Complainant contacted the Respondent and explained that GENESTA was the name of an established business that was providing goods and services under the same name. In addition, the Complainant explained to the Respondent the importance of obtaining the <genesta.com> Domain Name since the Complainant had a substantial amount of money invested in the GENESTA name, already having an active business. In addition, the Complainant told the Respondent that the Complainant had applied for a Federal Trademark Registration.

In response to the Complainant, the Respondent offered to sell the <genesta.com> Domain Name for $19,000, an amount much in excess of out-of-pocket expenses. The Complainant declined the offer to buy the Domain Name for $19,000.

 

5. Partiesí Contentions

A. Complainantís contentions

i. The Complainant contends that it is the owner of the trademark "GENESTA." The Complainantís trademark rights have accrued through use of the mark on the Internet in connection with application and system integrator for Symbol, Intermec, and Cisco products at <genesta.net> since June of 2000.

In addition, the Complainant applied for a Federal Trademark Registration of the mark GENESTA (Application Serial No. 78/205189) on January 20, 2003, for use on computer software for data collection, specifically in the areas of RFID, bar code scanning and speech recognition, based on actual use in commerce as early as June 1, 2000.

ii The Complainant argues that the Domain Name is confusingly similar to the GENESTA mark, pursuant to Paragraph 4(a)(i) of the Policy. The Complainant contends that Domain Name <genesta.com> is identical to the Complainantís trademark GENESTA because the adjunction of the letters "www" and the suffix ".com" to the GENESTA name does not distinguish the Domain Name from the trademark.

iii. The Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that the Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

The Complainant alleges that the Respondent has not used nor made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Respondent has not set up a website since he acquired the Domain Name in May 2000.

The Complainant further alleges that the Respondent is not a proprietor of a trademark "GENESTA". The Complainant did not license or in any other way permit the Respondent to use its trademark "GENESTA". The Respondent has not been commonly known by the GENESTA name. The Respondent is not making a legitimate non-commercial or fair use of the Domain Name since the Respondent has not set up a website since May 2000.

iv. The Complainant contends that the Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).

On June 10, 2000, the Complainant contacted the Respondent and explained that GENESTA was the name of an established business that was providing goods and services under the same name, had registered the domain name <genesta.net> and had applied for a Federal Trademark Registration.

The Respondent offered to sell the <genesta.com> Domain Name for $19,000, an amount much in excess of out-of-pocket expenses. The Complainant declined the offer to buy the Domain Name for $19,000. It is the Complainantís belief that the Respondent asked for an unreasonably high price because the Respondent realized the importance of the name to the Complainant, hence, acting in bad faith.

Knowing the importance of the GENESTA name to the Complainant, the Respondent has been reluctant to transfer the name for a reasonable amount. As of today, the Respondent has not made use of the Domain Name. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it was established that inaction indeed could constitute bad faith registration and use. See also Freedom of Information Foundation of Texas v. Steve Lisson, WIPO Case No. D2001-0256 (Respondentís "passive" holding of the domain name provides support for a determination of "bad faith" registration and use).

B. Respondentís contentions

i. The Respondent has filed no response and therefore does not dispute that the Complainant has a common law trademark in GENESTA.

ii. The Respondent has filed no response and therefore does not dispute that the Domain Name in confusingly similar to the Complainantís mark.

iii. The Respondent has filed no response and therefore does not dispute the Complainantís assertion that the Respondent lacks rights to or legitimate interests in the Domain Name.

iv. The Respondent has filed no response and therefore does not dispute the Complainantís assertion that the Respondent registered or used the Domain Name in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Because both the Complainant and the Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though the Respondent has failed to file a response or to contest the Complainantís assertions, the Sole Panelist will review the evidence proffered by the Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that 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,
ii) that the Respondent has no legitimate interests in respect of the domain name; and,
iii) that the domain name has been registered and is being used in bad faith.

Common Law Trademark

The Complainant has alleged that it has used the phrase "GENESTA" since June 2000, in the rendering of services on the Internet in connection with application and system integrator for Symbol, Intermec, and Cisco products at <genesta.net> since June 2000. These allegations have not been contested by Respondent.

The Sole Panelist finds that such uncontested allegations are sufficient to support an inference that the GENESTA mark has acquired secondary association. Therefore, the Sole Panelist finds that the Complainant for purposes of this proceeding has enforceable rights in the GENESTA mark.

Identity or Confusing Similarity

The Complainant further contends that the Domain Name is identical with and confusingly similar to the mark. The Respondent has not contested the assertions made by the Complainant that the Domain Name is confusingly similar to the mark.

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainantís registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainantís registered trademark.

The Sole Panelist notes that the entirety of the mark GENESTA is included in the Domain Name.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998).

The phrases "www" and ".com" are non-distinctive because they are required for registration of a domain name.

Therefore, the Sole Panelist finds that the Domain Name is confusingly similar to the GENESTA mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

The Complainant contends that the Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with the Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

The Respondent has no relationship with or permission from the Complainant for the use of the GENESTA mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that the Respondent has rights or a legitimate interest in the Domain Name:

(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.

The Complainant has alleged that none of these elements exists. The Complainant has sustained its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Domain Name. The Respondent has failed to come forward with concrete evidence of use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of such services.

The file contains no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that the Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

The Complainant contends that the Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for the Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

As indicated above, the Complainant has alleged that it contacted the Respondent seeking a transfer of the Domain Name <genesta.com>. The Respondent offered to sell the <genesta.com> Domain Name for $19,000, an amount much in excess of out-of-pocket expenses. The Complainant declined the offer to buy the Domain Name for $19,000. It is the Complainantís belief that the Respondent asked for an unreasonably high price because the Respondent realized the importance of the name to the Complainant, hence, acting in bad faith.

The Complaint further argues that the Respondent has not made use of the Domain Name. In Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, it was established that inaction indeed could constitute bad faith registration and use. See also Freedom of Information Foundation of Texas v. Steve Lisson, WIPO Case No. D2001-0256 (respondentís "passive" holding of the domain name provides support for a determination of "bad faith" registration and use).

The Respondent has failed to contest any of the allegations made by the Complainant. Specifically, the Respondent has offered no evidence concerning his motivation in registering or using the mark. The only evidence is that submitted by the Complainant.

Therefore, the Panel finds from the evidence presented that the only purpose for registering the Domain Name was to sell the Domain Name for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name.

The Sole Panelist finds that the Complainant has shown the necessary elements of bad faith under the Policy paragraph 4(b)(i).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Name <genesta.com> is confusingly similar to the Complainantís common law trademark GENESTA, (b) that the Respondent has no rights or legitimate interest in the Domain Name and (c) that the Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to the Complainant.

 


 

Richard W. Page
Sole Panelist

Dated: July 23, 2003