WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gateway Inc. v. Domains by Proxy Inc. / NetWeb, Inc.

Case No. D2008-0063

1. The Parties

Complainant is Gateway Inc. of Irvine, California, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, of Chicago, Illinois, United States of America.

Respondent is Domains by Proxy Inc. of Scottsdale, Arizona, United States of America / NetWeb, Inc. of Fair Play, South Carolina, United States of America.

2. The Domain Names and Registrar

The disputed domain names <e-gatewaycomputer.com> and <e-gatewaycomputers.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2008. On January 17, 2008, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the domain names at issue. On January 18, 2008, GoDaddy.com, Inc. transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on January 22, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on January 25, 2008. The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on January 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2008.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on February 27, 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 states that it “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.”

Complainant states that it has registered “a family of marks revolving around the central term ‘GATEWAY’ “ in at least 37 countries (the “GATEWAY Marks”). These marks include the following in the United States:

Mark	U.S. Reg. No.	Date of registration	Goods/services
GATEWAY COUNTRY	2,173,818	July 14, 1998	retail stores featuring computers, computer software, computer peripherals, and demonstration of products relating thereto
GATEWAY.COM	2,073,470	June 24, 1997	business management and consulting services in the field of connecting businesses to a global computer network

Complainant states that it “maintains a significant Internet presence through its web site at <Gateway.com>, which provides information about Gateway and its computer and computer-related products and services, and also owns and has registered the domain name <gatewaycomputers.com>.”

Each of the Disputed Domain Names was created on June 6, 2005. According to printouts provided as exhibits by Complainant, a website using each of the Disputed Domain Names contains links to various services apparently offered by third parties, including advertising links for competing computer products.

5. Parties’ Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- Complainant has rights in the GATEWAY Marks based upon its cited trademark registrations in 37 countries – and the marks have become famous as a result of Complainant’s “effort, money, skill and other resources,” including the investment of “many millions of dollars in promoting the GATEWAY Marks” and the sale of “many billions of dollars in products and services under the GATEWAY Marks.” Each of the Disputed Domain Names is confusingly similar to the GATEWAY Marks because it “consists of Gateway’s GATEWAY mark, preceded by the term ‘e’ and followed by the generic term for Gateway’s principal product.”

- Respondent lacks rights in the Disputed Domain Name because Respondent is not an authorized dealer or reseller of Complainant’s products; Respondent is not licensed or otherwise authorized to use the GATEWAY Marks or act on Complainant’s behalf; Respondent registered each of the Disputed Domain Names about 20 years after Complainant began doing business under the GATEWAY Marks; and “Respondent is using the GATEWAY Marks to attract people who are interested in Gateway computers, and diverting them to sites advertising and selling non-Gateway computers.”

- Respondent registered and is using each of the Disputed Domain Names in bad faith because Respondent had actual and constructive knowledge of the GATEWAY Marks, as evidenced by the links to Complainant’s products on Respondent’s website and by the fame of the GATEWAY Marks; and Respondent is using the Disputed Domain Name in connection with “web sites containing links to non-Gateway web sites, including sites belonging to competitors of Gateway.” Further, Complainant contends that “opportunistic bad faith” exists because “the domain name is so obviously connected with [C]omplainant’s trademark and its products” (citing Clad Holdings Corporation v. Administration Local, WIPO Case No. D2005-0124).

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the GATEWAY Marks. Further, previous panels under the Policy have reached the same conclusion. See, inter alia, Gateway, Inc. v. High Traffic Pro-Life Domains only $999, WIPO Case No. D2003-0261 (“the mark GATEWAY is protected by federal and common law”); and Gateway Inc. v. Exotic Design Group, WIPO Case No. D2008-0051.

As to whether the Disputed Domain Names are identical or confusingly similar to the GATEWAY Marks, the relevant comparison to be made is with the second-level portion of the Domain Names only (i.e., “e-gatewaycomputer” and “e-gatewaycomputers”), as it is well-established that the top-level domain identifier (i.e., “.com”) should be disregarded for this purpose. See, e.g., Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only…, as it is well-established that the top-level domain names… should be disregarded for this purpose”).

Therefore, the only difference between the relevant portion of each of the Disputed Domain Names (“e-gatewaycomputer” and and “e-gatewaycomputers”) and the GATEWAY Marks is the addition of the letter “e”, a hyphen and the word “computer” or “computers” to the Disputed Domain Name. Given that the letter “e” is commonly used in connection with computers¹ and that the words “computer” and “computers” describe Complainant’s product, this Panel believes the reasoning cited by a previous panel in a dispute involving the same complainant is applicable here as well: “The Disputed Domain Name contains the key name and mark of the Complainant [G]ateway and the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business…” Gateway Inc. v. Domaincar, WIPO Case No. D2006-0604. See also Inter-IKEA Systems B.V v. Technology Education Center, WIPO Case No. D2000-0522 (“[t]he Panel does not consider the addition of the prefix ‘e’ to a service mark would be sufficient to distinguish new internet service sources from existing service sources”).

Accordingly, the Disputed Domain Names are confusingly similar to the Complainant’s GATEWAY Marks, and the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent lacks rights in the Disputed Domain Name because Respondent is not an authorized dealer or reseller of Complainant’s products; Respondent is not licensed or otherwise authorized to use the GATEWAY Marks or act on Complainant’s behalf; Respondent registered the Disputed Domain Name “[l]ong after the GATEWAY Marks became famous in the United States and in certain foreign jurisdictions”; and “Respondent is using the GATEWAY Marks to attract people who are interested in Gateway computer, and diverting them to sites advertising and selling non-Gateway computers.”

Under the Policy, a complainant is required to make out a “prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.

Accordingly, as a result of Complainant’s allegations and without any evidence of Respondent’s rights or legitimate interests in the Disputed Domain Names, the Panel is satisfied that Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant does not specifically allege which, if any, of the four circumstances listed above exists to create bad faith. However, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. In particular, Complainant states that Respondent is using the Disputed Domain Names in connection with “web sites that contain links to non-Gateway websites, including sites belonging to Gateway’s direct competitors such as Toshiba and Lenovo.” An exhibit provided by Complainant supports this statement. Accordingly, Complainant has established the presence of bad faith. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc., WIPO Case No. D2005-0850 (“where… the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy”).

Therefore, the Panel is convinced that Complainant has proven the third element of the Policy.

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 names <e-gatewaycomputer.com> and <e-gatewaycomputers.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: March 12, 2008

¹ According to the Merriam-Webster dictionary website, “e” as a prefix means “electronic”, as in “e-mail” or “e-commerce.” “www.merriam-webster.com/dictionary” (visited March 10, 2008).