Gateway.biz

The timeline behind gateway.biz

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Gateway, Inc. v. Internet Services Claim Number: FA0506000491742 PARTIES Complainant is Gateway, Inc. (“Complainant”), represented by Robert W. Sacoff, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, 311 South Wacker Drive, Suite 5000, Chicago, IL 60606. Respondent is Internet Services (“Respondent”), PMB 330-739, 1733 H Street, Blaine, WA 98230. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <gateway.biz>, registered with Tucows Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Honorable Richard B. Wickersham, Judge (Ret.), as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2005. On June 7, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum (“NAF”) that the domain name <gateway.biz> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On June 10, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 30, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@gateway.biz by e-mail. A timely Response was received on June 24, 2005. The Response, however, does not comply with the requirements set forth in UDRP Rule 5 and NAF Supplemental Rule 5. On July 11, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Richard B. Wickersham, Judge (Ret.), as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant (1) Complainant, Gateway, Inc., is a publicly-traded 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 $3.6 billion in 2004. (2) Since at least as early as 1986, long prior to Respondent’s registration of the Infringing Domain Name, Gateway adopted, and has continuously used and promoted since that adoption, a family of marks revolving around the central term GATEWAY (the "GATEWAY Marks") in connection with computers and computer peripherals products and related services. (3) Gateway also maintains a significant Internet presence through its web site at <gateway.com>, which provides information about Gateway and its computers and computer-related products and services. Gateway also operates a website at <gatewaybiz.com>, which provides targeted information and resources to its small business customers. (4) As a result of Gateway’s investment of its effort, money, skill and other resources, Gateway’s GATEWAY Marks are widely recognized as indicating goods and services emanating from Gateway, and have become famous trademarks. (5) Gateway owns valid and subsisting federal trademark registrations for the GATEWAY Marks. Each of these registrations is valid, subsisting and owned by Gateway. Moreover, Reg. Nos. 2,173,818 and 2,073,470, are incontestable in accordance with 15 U.S.C. §§ 1065 and 1115(b), and constitute conclusive evidence of the validity of the GATEWAY Marks, Gateway’s ownership of the GATEWAY Marks, and its exclusive right to use the GATEWAY Marks for the goods and services specified in the registrations. (6) In addition, Gateway has used the GATEWAY Marks on a worldwide basis and has registered the GATEWAY Marks or applied for registration in several foreign jurisdictions. (7) Gateway has invested many millions of dollars in promoting the GATEWAY Marks and has sold many billions of dollars in products and services under the GATEWAY Marks. (8) As a result of Gateway’s extensive marketing efforts, substantial sales and the resulting success of its products and services, the GATEWAY Marks have also become famous and represent extraordinarily valuable goodwill associated with and owned by Gateway. (9) The fame and reputation symbolized by the GATEWAY Marks have been developed, in part, through Gateway’s extensive efforts to rigorously protect its GATEWAY Marks. (10)In sum, Gateway’s GATEWAY Marks are exceedingly well-known and famous, and recognized in the United States and around the world as an indication of products and services emanating from Gateway. (11)Respondent is not affiliated with or related to Gateway in any way, nor is Respondent licensed by Gateway to use the GATEWAY Marks, any GATEWAY-based marks, or the <gateway.biz> mark or domain name. (12)On March 27, 2002, long after the GATEWAY Marks became famous in the United States and in certain foreign jurisdictions, Respondent registered the Infringing Domain Name, <gateway.biz>. B. Respondent (1) In its Response to the Complaint in this proceeding, Respondent does not dispute that Complainant owns valid rights in its GATEWAY Marks or that the <gateway.biz> domain name (the "Infringing Domain Name") is identical or confusingly similar to those trademarks. Instead, Respondent claims that it registered the Infringing Domain Name for use in driving Internet traffic to its Creation Science web site located at <dinosaurs.info>. (2) All Respondent has shown is that it registered the Infringing Domain Name, and contacted NAF by e-mail thirteen (13) days after receipt of official notification of the proceeding to present its justification, namely, the development of an online Creation Science web site for which the Infringing Domain Name will be used solely to redirect Internet traffic to a web site located at <dinosaurs.info> . (3) Respondent has admitted that it registered other domain names, including the Infringing Domain Name, for the sole purpose of using them to redirect Internet traffic to the <dinosaurs.info> web site Respondent is apparently developing. (4) Respondent also claims that the reason some of these domain names, including the Infringing Domain Name, point to the web site located at <aaces.com>, is because the "domains had to be used for business" as "required by the .biz registry." Respondent's web site at <aaces.com> features and sells a range of non-Gateway computer-related products and services, including domain name hosting and Internet services. (5) NAF indicated to Respondent in an e-mail dated June 24, 2005 that Respondent's e-mail of June 23, 2005 was a non-compliant Response. Nevertheless, Respondent confirmed to NAF in an e-mail dated June 24, 2005 that the earlier e-mail should be deemed its complete and official response in this proceeding. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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; (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. FINDINGS Procedural Issue Respondent submitted its Response in electronic form on June 23, 2005. UDRP Rule 5(b) states, “The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form . . .” In addition, Rules 5(b)(i)-(ix) mandate further information to be included in responses including, among other things, a signed certification that the information included in a response is complete and accurate. Respondent has failed to provide a hard copy of its Response, to certify the Response, and to address other mandates provided for under Rule 5(b). In its discretion, the Panel may choose to either disregard or accept the Response, despite its noncompliance with the UDRP Rules. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also Schott Glas v. Necschott, D2001-0127 (WIPO Mar. 14, 2001) (choosing not to consider the response in light of formal deficiencies). We will consider Respondent’s Response. Identical and/or Confusingly Similar Policy ¶ 4(a)(i). Complainant claims rights in the GATEWAY and GATEWAY-related marks, pursuant to Policy ¶ 4(a)(i). Complainant bases those rights on numerous trademark registrations for those marks with the U.S. Patent and Trademark Office. The Panel finds that Complainant has established rights in the GATEWAY marks as the result of its federal registrations for the marks. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption.). The Panel also finds that the <gateway.biz> domain name is identical to Complainant’s GATEWAY mark because the domain name incorporates the entire mark in the second-level domain without modification. The addition of generic top-level domains are insignificant under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Rights or Legitimate Interests Policy ¶ 4(a)(ii). Complainant argues that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) and (iii), because at one time, Respondent pointed the domain name to a website which sold “non-Gateway computer-related products and services.” Complaint at ¶ 32. The Panel finds that Respondent used the domain name to market products that competed with Complainant’s goods or services sold under the GATEWAY-related marks, and concludes that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s appropriation of the complainant’s mark to market products that compete with the complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the complainant, had no rights or legitimate interests in a domain name that utilized the complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to the complainant’s mark and that the respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods). Complainant further contends that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because Respondent is not authorized to use Complainant’s GATEWAY mark. The Panel finds that Respondent would not have chosen the domain name but for Complainant’s mark and Respondent is seeking to create an impression of an association with Complainant, and concludes that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“[U]nauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Telstra Corp. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb.18, 2000) (finding that the respondent lacked rights and legitimate interests in the domain name because the respondent was not authorized by the complainant to use its trademarks and the mark was distinct in its nature, such that one would not legitimately choose it unless seeking to create an impression of an association with the complainant). The Panel finds that Respondent is not commonly known by the <gateway.biz> domain name because Respondent is merely using the domain name to “drive more traffic to the Creation Science website . . . .” Response at 1. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Registration and Use in Bad Faith Policy ¶ 4(a)(iii). Complainant argues that Respondent registered and used the disputed domain name in bad faith by “registering the Infringing Domain Name and using it to direct Internet users to competing goods and services. Respondent’s conduct demonstrates bad faith under Paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.” Complaint at ¶ 34. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks thus creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the complainant’s mark and offering the same services as Cthe complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent initially used the domain name at issue to resolve to a website offering similar services as the complainant into the same market); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant). Furthermore, Complainant contends that Respondent registered and used the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the GATEWAY mark at the time of registration. See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for the respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <gateway.biz> domain name be TRANSFERRED from Respondent to Complainant. ___________________________________________________ Honorable Richard B. Wickersham, Judge (Ret.), Panelist Dated: July 18, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.