WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Gateway Inc. USA v. Unicorn Computers

Case No. DRO2007-0001

1. The Parties

The Complainant is Gateway Inc. USA, of California, United States of America, represented by SD Petosevic Romania SRL, Romania.

The Respondent is Unicorn Computers, of Bucharest, Romania.

2. The Domain Name and Registrar

The disputed domain name <gateway.ro> is registered with RNC.ro.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2007. On April 13, 2007, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the domain name at issue. On April 16, 2007, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On April 18, 2007, 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 the Respondent of the Complaint, and the proceedings commenced on April 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2007. The Response was duly filed with the Center on May 8, 2007.

Supplemental filings were received by the Center from the Complainant on May 16, 2006, and from the Respondent on May 18, 2007.

The Center appointed Beatrice O. Jarka as the Sole Panelist in this matter on May 23, 2007. The Sole Panelist subsequently withdrew, and accordingly it was necessary for the Center to appoint an alternate Sole Panelist to decide the case.

The Center appointed Luca Barbero as the Sole Panelist in this matter on June 7, 2007. 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.

The Panel notes that while the registration agreement appears to be available on-line in both English and Romanian, the registrar has advised that the language of the registration agreement for the disputed domain name is Romanian. The Panel further notes that the Complaint has been submitted in English, and that the Complainant has requested and provided supporting arguments that the language of proceedings be English. While the Respondent has elected to submit its Response and Supplemental filing in Romanian (which the Panel has had translated), the case file communications indicate that the Respondent is clearly familiar with English, and that the Respondent has (in its email to the Center of April 17, 2007) expressly indicated agreement to both English and Romanian being appropriate languages for use in the current proceedings. Accordingly, the Panel is satisfied that English is an appropriate language for use is these proceedings, and that the Respondent will not in the circumstances be disadvantaged.

4. Factual Background

The Complainant is inter alia the owner of the three trademarks GATEWAY registered and/or duly extended in Romania:

- GATEWAY (word mark) international trademark No. 574055A filed in 1991 and valid until 2011 registered in Romania for the classes 01, 09 and 16;

- GATEWAY (word mark) national trademark No. 047879 filed on 2001 and valid until 2011 registered in Romania for the classes 09 and 39;

- GATEWAY (with device) national trademark No. 54488 filed in 2002 and valid until 2012 registered in Romania for the class 09.

The Respondent has registered the domain name <gateway.ro> on October 6, 1999.

5. Parties’ Contentions

A. Complainant

The Complainant points out that Gateway Inc. owns and uses worldwide a family of GATEWAY marks that includes GATEWAY, GATEWAY 2000 and other related marks.

The Complainant asserts that it is the leading direct seller of computers – as also found in prior WIPO cases such as Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257 or Gateway, Inc. v. High Traffic Pro-Life Domains only $999–, WIPO Case No. D2003-0261 – which are sold under the name and mark GATEWAY.

The Complainant contends that the GATEWAY marks and the goodwill are exceedingly valuable corporate assets of the Complainant informing the Panel that in the five years from 1997 through 2001, Complainant has invested more than USD 1,200,000,000 in advertising and promoting the GATEWAY marks and has sold more than USD 38,000,000,000 in products and services under its GATEWAY marks.

The Complainant contends that the disputed domain name <gateway.ro> is identical to trademarks in which Complainant has rights.

With reference to rights or legitimate interests in respect of the contested domain name, the Complainant states that there is no relationship between Gateway and the Respondent that would give rise to any license, permission or other right by which the Respondent could own any domain name incorporating the sign and mark GATEWAY.

The Complainant states that when Gateway put the Respondent on notice of its rights, the Respondent did not put forward any legitimate claim to the domain name but the Respondent only proceeded to redirect the domain name to other web pages.

With reference to the bad faith at the time of registration, the Complainant indicates the Respondent has knowingly registered a well-known trademark as a domain name in order to profit from it in bad faith.

The Complainant emphasizes that the Respondent registered the domain name long after Complainant’s adoption, use and registration of its GATEWAY marks and domain names worldwide. The Complainant states that the Respondent registered the domain name on October 1999, while the Complainant has done business under GATEWAY names and marks since at least as early as 1986, and that the mark GATEWAY has been registered in Romania since 1991.

The Complainant underlines that Respondent’s field of activity “Wholesale of computers, computer peripheral equipment and software” corresponds to the main field of activity of the Complainant.

Furthermore, the Complainant contends that the Respondent unduly presented its company as “a GATEWAY authorized distributor” or “a GATEWAY partner”, information which is not accurate.

The Complainant informs the Panel that the disputed domain name <gateway.ro> was redirected to the webpage of the Respondent, “www.unicorn.ro”, then to “www.alfaweb.ro” (a web hosting and domain name registration site) and, within a few days, to an office supply webpage, also offering computers and accessories. The Complainant states this is a circumstance evidencing bad faith, according to paragraph 4b(iv) of the Policy, since by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its/a third party website, by creating a likelihood of confusion with the Complainant’s trademarks.

The Complainant also contends that the Respondent’s registration of <gateway.ro> prevents the trademark owner from reflecting the mark in a corresponding domain name and that the registration of the domain name by the Respondent disrupts its activity.

As of its registration, the domain name in discussion was redirected to the Respondent’s web page, “www.unicorn.ro” (see Exhibits 7 and 8 containing the Cease&Desist letter of July 2004 mentioning “the concurrent existence of the webpage having the same content under the gateway.ro domain name and under the unicorn.ro domain name” and the Internet excerpt of March 1, 2007 confirming the same).

The Complainant informs the Panel that on January 30, 2007, the director of the Respondent, Mr. Gabriel Popa was contacted by Complainant’s representative via telephone with regard to the transfer of the domain name and that immediately following such a phone call – after many years of being redirected to the Respondent’s webpage (“www.unicorn.ro”) the domain name was redirected to a different website (“www.alfaweb.ro”) a domain name hosting and registration website. Subsequently, on March 19, 2007, at the time of drafting the present Complaint, the domain name was then redirected to an office supply webpage, including computer devices and accessories, providing the Panel with copies of both pages.

According to the Complainant such a strategy is to be considered as further evidence of use of the domain name in bad faith.

The Complainant also states that the Respondent’s use of the disputed domain name is intended to exploit the good reputation and goodwill of the Complainant, to Respondent’s own benefit, by creating confusion among the Internet users with regard to a potential connection between the Complainant and the Respondent.

With reference to the issue of the bad faith the Complainant contends that the Respondent has registered the domain name primarily for the purpose of selling the domain name registration to the trademark holder, providing the Panel with a copy of a letter where the Respondent has requested the amount of USD 153,000 “as evaluated by experts” for the transfer of the domain name. The Complainant concludes that it is a valuable consideration clearly in excess of the documented out-of-pocket costs directly related to the domain name.

B. Respondent

The Respondent contends that – according to Romanian law – the legal representative for the Complainant cannot represent the Complainant in the present procedure in light of the powers conferred to lawyers in Romania and also in view of the administrative form of the power of attorney adopted.

The Respondent also draws the Panel’s attention on the time that has elapsed from the date of registration in 1999 and the first actions of the Complainant undertaken on 2004. The Respondent also complains for the way the Complainant representative has made use of the information contained in the Whois.

According to the Respondent, there are no confusingly similarities with the trademark GATEWAY and the domain name, no evidence is existing about the lack of any rights or legitimate interests to use the domain name and of the fact that the domain name was registered and is being used in bad faith.

The Respondent emphasizes that the Complainant did not provide sufficient elements as to the bad faith infringement of any Complainant’s rights and interests in Romania.

The Respondent contends that Complainant did not provide any Information Technology business in Romania nor has the Complainant indicated the names of the local authorized or licensed agents.

The Respondent indicates that its acquisition of the disputed domain name occurred when the Complainant’s name was “Gateway2000” and therefore, according to the conditions of Romanian and International Law, the acquisition was legitimate and has not been contested by the Complainant.

The Respondent underlines that the Complainant was not active in Romania until 1989 and alleges that since the domain name GATEWAY has a meaning in the Romanian language it could not have been registered as a valid domain name.

The Respondent informs the Panel that according to the information available on the Complainant’s site, the company was founded in 1985 but used the name GATEWAY2000 until 2002.

The Respondent states that there was no intention to abuse of the Complainant’s trademark since the domain name was pointing to some pages of the Respondent’s company at “www.unicorn.ro”, in a virtual area dedicated to the trade of COMPUTER UNICORN products.

The Respondent points out that the domain name is pointing to the website of a company specialized in hosting it is currently impossible to be in competition with the Complainant’s activities, reaffirming that the activities presently pursued are perfectly in line with the Romanian rules and regulations of the Department of Justice.

With reference to the other domain names owned by the Complainant, the Respondent notes that, as indicated for some other countries, the Complainant should have instead adopted “www.ro.gateway.com” as opposed to the domain name.

Furthermore, the Respondent asserts that the Complainant has not registered the corresponding ccTLDs in Poland, Hungary, Bulgaria and also in Austria, Switzerland, Spain, Portugal and others, concluding that the Complainant has therefore a weak interest in the trade in the European Union area.

With reference to the circumstances evidencing bad faith, the Respondent indicates that the disputed domain name <gateway.ro> has functioned for the promotion and the sales of the products of COMPUTER UNICORN again stating that it is a perfectly legal entity according to Rumanian law. The Respondent furthermore declares that the domain name <gateway.ro> was neither inactive nor was diverted to other websites in bad faith.

Concerning the offer and the negotiation of the purchase price, the Respondent states that the consideration requested was an outcome of the correspondence received in 2004.

6. Discussion and Findings

As preliminary remarks, the Panel finds that the procedural issues, raised by the Respondent as to the applicable law, do not need to be addressed in the present procedure since, in accordance with paragraph 15(a) of the Rules, the Romanian law is not the only one applicable to the procedure.

With reference to the issue of the time elapsed between the registration of the domain name and the filing of the procedure, the Panel affirms that no time restriction is set for a Complainant to start an action according to the URDP. The Panel further notes that, while a delay in commencing proceedings may not assist a complainant’s case, neither is necessarily a determinative consideration in the absence of other factors. To the extent that it may be relevant, the Panel notes that the Respondent has for example made no persuasive argument that it has or will suffer injury because of Complainant’s delay in initiating these proceeding, or that the Complainant had consented to Respondent’s use of its trademark in the disputed domain name. See for e.g. Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560; LIAT (1974) Ltd. v. Mark Armstrong, WIPO Case No. D2006-1574.

As to the objection of the Respondent in connection with the use of information in the Whois, the Panel notes that such information is public.

The Panel also finds that in the duly examined supplemental filings, neither the Complainant nor the Respondent provided the Panel with any particularly relevant new information.

A. Identical or Confusingly Similar

The Complainant has provided the Panel with evidence of ownership of many valid trademark registrations in Romania consisting of or comprising the sign GATEWAY including GATEWAY (word mark) international trademark No. 574055A filed in 1991 and valid until 2011 registered in Romania for the classes 01, 09 and 16; GATEWAY (word mark) national trademark No. 047879 filed on 2001 and valid until 2011 registered in Romania for the classes 09 and 39 and GATEWAY (with device) national trademark No. 54488 filed in 2002 and valid until 2012 registered in Romania for the class 09.

The Panel finds that the disputed domain name is therefore identical to the trademarks owned by the Complainant.

The Panel notes that the fact that the Complainant used the name “GATEWAY 2000” apparently until 2002, is not relevant here in light of the Complainant’s GATEWAY trademark registrations in Romania.

In view of the registered trademark rights, the issues raised by the Respondent that the Complainant has not provided information on existing business in Romania, has not indicated the names of the local authorized agents or the actual number of ccTLDs registered in the European Union as an evidence of interest in a given area, are not to be considered relevant in the present procedure under the Policy.

In comparing the Complainant’s marks to the Domain Name to <gateway.ro> it should be taken into account the well established principle that the suffixes, including the generic top level domains, may be excluded from consideration as being merely a functional component of the domain name. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770 “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”).

The Panel finds that the Complainant has therefore proven that the disputed domain name is identical to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must make a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Respondent may establish a right or legitimate interest in the disputed Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] 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.

It is well-established that the burden of proof lies on the Complainant. However, it is also well-recognized that proving a respondent lacks such rights or legitimate interests can for a complainant be quite onerous, since proving a negative circumstance is generally more difficult than establishing a positive one.

Accordingly, it is generally recognized as sufficient that a complainant show prima facie evidence that a respondent lacks rights or legitimate interests in a disputed domain name in order to shift the burden of proof to the respondent. If a respondent then fails to demonstrate rights and legitimate interests in the domain name in accordance with paragraph 4(c) of the Policy or on any other basis, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Met America Mortgage Bankers v. Whois ID Theft Protection, NAF Case No. 852581).

In the present case, as emerged both in the Complaint and in the Response, there is no official relation between the Respondent and the Complainant and the Respondent is not an authorized licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use Complainant’s trademarks and name under any circumstance and to sell Complainant’s products.

Furthermore, there is no indication before the Panel that the Respondent has made preparations to use the domain name in connection with a bona fide offering of goods or services or is making a legitimate, non-commercial or fair use of the domain name.

The Respondent indicated that the use of the domain name was not intended to be infringing the Complainant’s trademark but then stated that the domain name was pointing to some pages of the Respondent’s company at “www.unicorn.ro”, in a virtual area dedicated to the trade of COMPUTER UNICORN products.

The Panel finds that such a use is not a legitimate, non-commercial or fair use of the disputed domain name, nor does the fact that presently the domain name has been redirected to a different website necessarily imply that the Respondent has acquired a right or a legitimate interest in the disputed domain name.

The Panel finds that the Respondent has failed to convincingly answer the Complainant’s prima facie case that it lacks rights or legitimate interests in respect of the disputed domain name. Accordingly, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or 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 holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 holder’s website or location or of a product or service on the holder’s website or location.

As to the bad faith at the time of the registration, the Panel observes that in light of the amount of advertising and sales of Complainant’s products worldwide and overall the fact that the Respondent is acting in the same field of activity of the Complainant and was also selling the Complainant’s products, the Respondent was or ought to be well aware of the Complainant’s trademarks.

With reference to the bad faith use, as also pointed out by the Respondent, the domain name has functioned since its acquisition for the promotion and the sales of the products of COMPUTER UNICORN.

Since the Respondent is apparently a competitor of the Complainant, the Respondent’s registration of the contested domain name interferes with the Complainant’s business and internet users are likely to be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin WIPO Case No. D2007-0286).

The Panel therefore finds paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent have attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.

As an additional element in support of this finding, the Complainant has highlighted that the Respondent was making use of the false indication of “a GATEWAY authorized distributor” or “a GATEWAY partner” while the Respondent has never been appointed as such by the Complainant.

Furthermore, the Panel finds that in light of the content of the correspondence attached to the Complaint, the disputed domain name appears also to have been registered for the purpose of selling it to the Complainant for an amount well in excess of the documented out-of-pockets costs. Indeed the Respondent offered to assign the domain name for USD 153,000 amount that is certainly well over (see inter alia Bencom SRL v. NetCorporation WIPO Case No. DRO2006-0007) the ordinary costs of registration of a “.ro” domain name.

In view of the above, the Panel deems paragraph 4(b)(i) of the Policy also applicable to the present case.

Since the Complainant’s trademark is well-known as indicated in Gateway, Inc. v. Lorna Kang WIPO Case No. D2003-0257, the Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868:

“It is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

As an additional circumstance evidencing bad faith of the Respondent, the Panel has noted in the documents submitted reference is made to a domain name <gateway2pc.ro> (confusingly similar to the trademark of the Complainant) which appears to have been registered by the Respondent on August 16, 2004, shortly after having received a cease and desist letter from the Complainant.

In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that (a) the domain name registered by the Respondent is identical to the Complainant’s trademarks; (b) the Respondent has no rights or legitimate interests in respect of the domain name and (c) that the domain name has been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the domain name <gateway.ro> be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: June 18, 2007