[Indexed as: Cabletron v. DSL]
[Indexed as: CABLETRONSYSTEMS.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No: WIPO D2000-0571
Commenced: 15 June, 2000
Judgement: 18 August, 2000
Presiding Panelist: Richard W. Page
Domain name - Domain name dispute resolution policy - Trademark - Confusingly similar - Bad faith registration - Bad faith use - Prior knowledge - Constructive knowledge - Right or legitimate interest - Wrong information.
Complainant is the registered owner of United States and international trademarks for the names CABLETRON and CABLETRON SYSTEMS. Complainant is a provider of world-class networking solutions. Respondent is DSL Enterprises and is the registered owner of the Domain Name cabletronsystems.com.
Held, Name Transferred to Complainant.
The Panel finds that the addition of a space between the two elements that comprise Complainants mark does not prevent the finding that the Domain Name cabletronstystems.com and trademark CABBLETRON SYSTEMS are identical or at least confusingly similar.
Respondent is not a licensee of Complainant or otherwise authorised to use Complainants mark. Respondent does not offer any goods or services using cabletronsystems.com , use the name as his business name or allege any legitimate noncommercial or fair use of the Domain Name.
Respondent had actual prior knowledge of the existence Complainants mark and, also had constructive knowledge of Complainants mark because of its registration. Respondent registered other well-known marks. Respondent has engaged in a pattern of registrations which prevents owners of the trademarks or service marks from reflecting their marks in a corresponding domain name. Respondent provided a false telephone number, e-mail address and false identities to Complainant and to the Registrar. Such actions have been deemed to be acts of bad faith.
Policies referred to
ICANN Uniform Domain Name Dispute Resolution Policy, adopted October 24, 1999
ICANN Rules for Uniform Domain Name Dispute Resolution Policy
ICANN Supplemental Rules for Uniform Dispute Resolution Policy
Panel decisions referred to
Christian Dior Couture SA v. Liage International Inc., ICANN D2000-0098 (WIPO).
Reef Industries, Inc. v. Moose Lake Products Company, Inc., ICANN D2000-0041 (WIPO).
Zwack Unicum Rt. v. Erica J. Duna, ICANN D2000-0037 (WIPO).
The Hamlet Group, Inc. v. James Lansford, ICANN D2000-0073 (WIPO).
Home Interiors & Gifts, Inc. v. Home Interiors, ICANN D2000-0010 (WIPO).
Barneys Inc. v. BNY Bulletin Board, ICANN D2000-0059 (WIPO).
Telstra Corporation Limited v. Nuclear Marshmellows, ICANN D2000-0003 (WIPO).
3636275 Canada, dba eResolution v. eResolution.com, ICANN D2000-0110 (WIPO).
Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO, ICANN D2000-0138 (WIPO).
1. The Parties
The Complainant is Cabletron Systems, Inc. ("Cabletron Systems"), a
corporation organized under the laws of the State of Delaware, USA, having
its principal place of business in Rochester, New Hampshire, USA.
Respondent is DLS Enterprises located in Murphy, North Carolina, USA.
2. The Domain Name and Registrar
The domain name at issue is "cabletronsystems.com" (the "Domain Name").
The registrar is Network Solutions, Inc. (the "Registrar") whose address
is 505 Huntmar Park Drive, Herndon, Virginia, USA
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the
Complaint of Complainant via email on June 7, 2000, and in hardcopy on
June 13, 2000. The Complainant paid the required fee.
On June 9, 2000, the Center sent to the Registrar a request for verification
of registration data.
On June 9, 2000, 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.
On June 9, 2000, the Center verified that the Complaint satisfies the
formal requirements of the ICANN 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 15, 2000, the Center sent a Notification of Complaint and Commencement
of Administrative Proceeding to the Respondent together with copies of
the Complaint, with a copy to the Complainant. This notification was sent
by the methods required under paragraph 2(a) of the Rules.
On June 22, 2000, the Center received a Response and sent an Acknowledgment
of Receipt of the Response.
On August 4, 2000, after the Center received a completed and signed
Statement of Acceptance and Declaration of Impartiality and Independence
from Richard W. Page, Esq. (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 has been using the CABLETRON SYSTEMS mark to provide
networking product solutions and services since 1983. The Complainant first
registered the CABLETRON SYSTEMS mark in the United States in 1993 and
has obtained a number of registrations for the CABLETRON SYSTEMS mark in
the United States and throughout the world.
The registrations for Complainants trademarks in the United States
are as follows:
Mark: International Class (goods/services): Registration
No: Registration Date:
CABLETRON SYSTEMS 9 (computer software) 1793450 21-Sep-1993
CABLETRON SYSTEMS 9 (computer networking products) 1944009
26-Dec-1995
CABLETRON 37 and 42 (computer services) 1972666 35191
Complainant also holds registered trademarks in CABLETRON SYSTEMS
and CABLETRON in the following countries: Albania, Algeria, Argentina,
Australia, Austria, Bahrain, Belgium, Belize, Benelux, Bophuthatswana,
Botswana, Brazil, Brunei, Bulgaria, Canada, Chile, China, Colombia, Costa
Rica, Croatia, Cyprus, Czech Republic, Denmark, Dominican Republic, Ecuador,
Egypt, El Salvador, Estonia, European Community, Finland, France, Georgia,
Germany, Greece, Guatemala, Honduras, Hong Kong, Hungary, Iceland, Indonesia,
Iran, Republic of Ireland, Israel, Italy, Jamaica, Japan, Jordan, Kuwait,
Latvia, Lithuania, Macau, Malta, Mexico, Morocco, Namibia, New Zealand,
Nicaragua, Norway, Panama, Peru, Philippines, Poland, Portugal, Puerto
Rico, Romania, Russian Federation, Saudi Arabia, Singapore, Slovak Republic,
Slovenia, South Africa, South Korea, Spain, Swaziland, Sweden, Switzerland,
Taiwan, Tangier, Thailand, Transkei, Tunisia, Turkey, United Arab Emirates,
United Kingdom, Uruguay, and Venezuela.
The Complainant owns and operates under the domain name "cabletron.com".
Complainant is a well-known provider of world-class networking solutions.
With scalable products designed for Global 1000 enterprise networks, service
providers, and small businesses, Complainant is the e-business communications
specialist in the Internet economy. The Complainants products and services
are used by leading Internet Service Providers, leading e-business retailers,
government organizations, and thousands of enterprise, healthcare, manufacturing,
and financial customers around the world. The Complainant also supports
a global network of Synergy Plus authorized distributors and resellers
who deliver award-winning technology and services in their regional markets.
Complainant is publicly traded on the New York Stock Exchange. As of February
29, 2000, net income for the fiscal year 2000 on a pro forma basis was
about $69.9 million, net sales were over $1.4 billion, and assets totaled
over $3.1 billion.
On May 16, 2000, the home page of the website www.cabletronsystems.com
indicated that the site was "Temporarily Unavailable" and encouraged Internet
users to "try back again soon!" Until about May 13, 2000, the Respondent
maintained an operational site on the World Wide Web using the Internet
address www.cabletronsystems.com. The textual heading of the www.cabletronsystems.com
website identified itself as "GOD." The home page of www.cabletronsystems.com
displayed three bouquets of roses and an advertisement for "DREAMHOST WEB
HOSTING." The advertisement for "DREAMHOST WEB HOSTING" provided a direct
link to the website "dreamhost.com".
In July 1999, the Respondent registered the domain name "cabletronsystems.com".
There is no indication that the Respondent ever used "cabletronsystems"
as its company name. Nor is there any indication that the Respondent was
commonly known as "cabletronsystems" prior to its registration of that
domain name.
There is no evidence that the Respondent has any trademark or other
rights in the mark CABLETRON SYSTEMS. Complainants counsel asked the Respondent
to cease and desist from use of the "cabletronsystems.com" domain name.
An individual who identified himself as Ron Savoy responded, stating "I
made cabletron [sic] aware I had the site as a courtesy, and even today
I got a piece of mail for them." On April 8, 2000, Mr. Savoy said that
he had previously indicated he would give up the domain name "if it would
not cost me any money!" On April 10, 2000, the Complainants counsel stated
that the Complainant was willing to provide the necessary forms to transfer
ownership of the domain name and to reimburse Mr. Savoy for his out-of-pocket
registration costs up to $250. Mr. Savoy responded that day, stating: "This
is fine as long as you cover all costs. Make check out to DLS enterprises
and NOT Ron Savoy. You have all the necessary information from my who is
information to send me mail. Just make sure I dont [sic] have to sign for
and [sic] mail from the post office!" The Complainants counsel responded
that it would send the reimbursement check for registration costs once
it received a signed transfer form from Mr. Savoy. Mr. Savoy, responding
as "Christopher Columbus," said, "A check will need to be issued before
I sign anything."
The Respondent also registered the domain name "putnam-investments.com"
in May 1999. This site is not currently operational. The message "page
cannot be displayed" appears when attempting to access the website. Putnam
Fiduciary Trust had registered the domain name "putnaminvestments.com"
in March 1998, over a year earlier. Putnam Fiduciary Trust owns, among
other registrations, a United States trademark for PUTNAM ONTRACK. There
is no evidence that the Respondent has any trademark or other rights in
the mark PUTNAM INVESTMENTS.
Respondent has filed the following email as his Response to the allegation
of the Complaint:
mr hayes,
I bought cabletronsystems over 1 year ago, i had no problems registering
the domain name. if someone else wanted it they should have bought it.
I bought it and i did nothing but put up a one page web site until I found
furthur use for it. I informed cabletron as a curtesy that I was getting
some of there e-mail. otherwise they would have never known i had the site.
it was not a competitive site, and it was not even in use, just a basic
page that i used just to have something there, this was not defamatory,
or driving away their business. i was contacted by some lawyer in manchester
NH, and they told me they were going to sue me for this and I explain to
they what i am stating now, i have done nothiung wrong. I was then contacted
by palmer dodge antoher lawyer in boston massachusetts and re-explained
the issue again and told them that if they wanted to have this name back
that i wanted ot be reimbursed for my expenses which are not very much
fo rthe site and they said they would give me 250$ and i told them this
was fine but I was not going to sign for any documentation at the post
office. The reason for this is i am allowed to keep my anonimity private,
I do not live in North carolina and Ron Savoy and Christopher Columbus
are obviously not my real names. I also but up default informaiton as in
no valid e-mail address or no phone # when I register my domain names,
I was allowed to. I have no problem giving them the domain name but i do
still feel I should be reimbursed for my expenses. That is only fair, I
would maybe disagree if I did something wrong with the domain name but
that is not the case.
thanks you for you time
Mr anonimity
5. Parties Contentions
A. Complainant contends that it has United States and international
registered trademarks in CABLETRON SYSTEMS and that the Domain Name is
identical with and confusingly similar to the CABLETRON SYSTEMS mark pursuant
to the Policy paragraph 4(a)(i).
Complainant contends that Respondent has no rights or legitimate interest
in the Domain Name pursuant to the Policy paragraph 4(a)(ii).
Complainant contends that Respondent registered and is using the Domain
Name in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent does not contest Complainants assertions of trademark
rights or that the Domain Name is identical with or confusingly similar
to the CABLETRON SYSTEMS mark.
Respondent contends that it does have rights or legitimate interest
in the Domain Name.
Respondent contends that its registration and use of the Domain Name
is not in bad faith.
6. Discussion and Findings
Identity or Confusing Similarity
The only difference between the CABLETRON SYSTEMS mark and the Domain
Name "cabletronsystems.com" is the addition of a space between the two
elements that comprise the Complainants mark. The addition of a space
is inconsequential and does not prevent a finding that the names are identical
or at least confusingly similar. See Christian Dior Couture SA v. Liage
International Inc., WIPO Case No. D2000-0098, § 7.B.1 at 4; Reef Industries,
Inc. v. Moose Lake Products Company, Inc., WIPO Case No. D2000-0041, §
6.B at 4; Zwack Unicum Rt. v. Erica J. Duna, WIPO Case No. D2000-0037,
§ 6.3 at 4; The Hamlet Group, Inc. v. James Lansford, WIPO Case No.
D2000-0073, § 6 at 4; Home Interiors & Gifts, Inc. v. Home Interiors,
WIPO Case No. D2000-0010, § 6 at 5.
Therefore, the Sole Panelist finds that Complainant has rights in the
trademark CABLETRON SYSTEMS and that the Domain Name is identical with
or confusingly similar to the CABLETRON SYSTEMS mark pursuant to the Policy
paragraph 4(a)(i).
Rights or Legitimate Interest.
The Policy paragraph 4(c) allows three methods for Respondent to demonstrate
that it has rights or a legitimate interest in the Domain Names:
(i) before any notice to you 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 (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 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.
Respondent is not a licensee of the Complainant, nor is he otherwise
authorized to use the Complainants mark. Respondent has offered no evidence
that he has offered any good or services using the Domain Name. Respondent
offers no evidence that he uses "cabletronsystems" as his business name;
and there is no evidence that he did so prior to his registration and use
of "cabletronsystems.com". Respondent alleges no legitimate noncommercial
or fair use of the Domain Name.
Therefore, the Sole Panelist finds that Respondent has no rights or
legitimate interest in the Domain Name pursuant to the Policy paragraph
4(a)(ii).
Bad Faith
The Policy paragraph 4(b) sets forth four criteria for 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 or service on your web site or location.
The Sole Panelist finds that Respondent has engaged in activities meeting
each of the criteria under the Policy paragraphs 4(b)(ii) for bad faith:
(ii) Respondent had actual knowledge prior to registration of the Domain
Name of the existence of Complainants mark because he initiated contact
with Complainant. In addition, Respondent had constructive knowledge of
the Complainants mark because of its registration. See, Barneys Inc.
v. BNY Bulletin Board, WIPO Case No. D2000-0059. Respondent has also registered
other well-known marks as in the case of "Putnam-investments.com". Therefore,
the Respondent has engaged in a pattern of registrations which prevents
the owners of the trademarks or service marks from reflecting their marks
in a corresponding domain name.
The criteria listed in the Policy paragraph 4(b) are not the exclusive
means of proving bad faith. Telstra Corporation Limited v. Nuclear Marshmellows,
WIPO Case No. D2000-0003.
Respondent provided a false telephone number , false e-mail address
and false identities to Complainant and to the Registrar. Such actions
have been deemed to be acts of bad faith. See 3636275 Canada, dba eResolution
v. eResolution.com, ICANN Case No. D2000-0110, § 6 at 7 (finding bad
faith where Respondent was an unidentified business entity and person responding
to Complainants cease and desist request did not provide street address
and gave means of communication and contact that were "unusual and even
questionable for someone conducting a legitimate business"); Quixtar Investments,
Inc. v. Scott A. Smithberger and QUIXTAR-IBO, WIPO Case No. D2000-0138,
§ 6.C at 3 (registration of false name indicates bad faith).
Therefore, the Sole Panelist finds that Respondent has registered and
used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Sole Panelist concludes (a) that the domain name "cabletronsystems.com"
is identical with and confusingly similar to the trademark CABLETRON SYSTEMS,
(b) that Respondent has no rights or legitimate interest in the Domain
Name and (c) that 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
Cabletron Systems, Inc.
Richard W. Page
Presiding Panelist
Dated: August 18, 2000
Name Transferred.
Domain Name Not Transferred