Perot Systems Corporation v. Domainsale
[Indexed as: Perot Systems v. Domainsale]
[Indexed as: ROSSPEROT.COM]
National Arbitration Forum
Administrative Panel Decision
Case No.FA0005000094725
Commenced: 8 May, 2000
Judgment: 15 June, 2000
Presiding Panelist: Honorable Herman D. Michels, Arbitrator
Domain name - Domain name dispute resolution policy - Service mark - Trademark - Identical - Confusingly similar - Bad faith Cybersquatting Affiliation Connection Sponsorship Approval Association.
Complainant is the owner of PEROT.COM, PEROTSYSTEMS.COM and PEROT SYSTEMS in which it has exclusive rights to use and license of said marks. Complainant has used the domain name PEROTSYSTEMS.COM since 1996. The co-founder, CEO, Chairman and President of the Complainant company is Ross Perot. Respondent registered the domain name ROSSPEROT.COM along with 100 other domain names.
Held, Name Transferred to Complainant.
Respondents domain name ROSSPEROT.COM is confusingly similar to Complainants domain names and marks. Respondents use of Complainants domain names and marks containing the name PEROT creates a likelihood of confusion for Complainants trademark users of some affiliation between Complainant and Respondent when none exists. Respondent has no rights or legitimate interests in the domain name ROSSPEROT.COM due to the domain name consisting primarily of the name of Complainants founder Ross Perot and Complainants domain names and marks. in which Respondent has no legitimate rights or interests.
The domain name was used and registered in bad faith. The evidence establishes that Respondent is merely redirecting the traffic from ROSSPEROT.COM to FAMOLOGY.COM a site that provides FREE Web-Based Email and appears not to have taken any steps to create any legitimate interest in the domain name. Additionally, Respondents primary business appears to be registering numerous domain names extensibly primarily for the purpose of cybersquatting.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision referred to
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Michels, Panelist: -
The above entitled matter came on for an administrative hearing on
June 14, 2000 before the undersigned Arbitrator on the complaint of Perot
Systems Corporation (Complainant) represented by John W. Patton, Esq. of
(Hughes & Luce, L.L.P.), against DomainSale (Steven Weber) (Respondent)
represented by Anthony J. DeGidio, Esq. (Calamunci, Groth, Joelson &
Manore L.P.A.). Upon the written submitted record, including the
Complaint and Exhibits and Reply of Complainant and the Response of Respondent,
I hereby render the following decision:
1. Procedural Findings
Domain Name: ROSSPEROT.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: DomainSale
Date of Domain Name Registration: February 28, 1999
Date Complaint Filed: May 8, 2000
Date Answer Filed: June 2, 2000
After reviewing the Complaint and determining it to be in administrative
compliance, the National Arbitration Forum (Forum) forwarded the Complaint
to Respondent in compliance with Rule 2(a) and the administrative proceeding
was commenced pursuant to Rule 4(c) in compliance with Rule 4(d).
The Forum immediately notified Network Solutions, Inc., the INTERNET CORPORATION
FOR ASSIGNED NAMES AND NUMBERS (ICANN) and Respondent that the administrative
proceeding had commenced. Respondent has now submitted a Response
to the Forum within the twenty (20) days pursuant to Rule 5(a) which time
has now expired. The Complaint and Exhibits and Response and Exhibits
were docketed and forwarded to the undersigned Arbitrator for decision.
On February 28, 1999, Respondent registered the domain name ROSSPEROT.COM with the domain name registrar Network Solutions, Inc., the entity that is the registrar of the domain name. Network Solutions, Inc. verified that Respondent is the registrant for the domain name ROSSPEROT.COM and that by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any disputes regarding its domain name through ICANNs Rules for Uniform Domain Name Dispute Resolution policy. Neither the Complainant nor the Respondent has contested the jurisdiction of the Forum or the undersigned Arbitrator to resolve this controversy.
2. FINDINGS OF FACT
1. Respondent [sic] is a world leader in the field of technology consulting
and services, including system management and system integration.
Respondent [sic] was founded by Ross Perot and others in 1988. As
co-founder, CEO, Chairman and President of Complainant, consumers associate
Ross Perot with his name sake Complainant.
2. As early as 1988 Complainant has used the domain name PEROT.COM.
This website garners significant traffic for Complainant and it serves
as Complainants on-line contact for consumers. Through use and development,
Complainant has gained valuable rights in the domain name and mark PEROT.COM.
3. Complainant filed a U.S. trademark and service mark application
for the mark PEROT.COM in January 1999. The application seeks registration
of the mark for goods and services including corporate publications in
the field of computers and related information technology, business consulting
services, communication services, computer and technology systems, communications
systems design and developing, implementing, hosting and maintaining websites
for others by means of a global computer information network. The
application is currently pending in the United States Patent and Trademark
Office.
4. As early as 1996, Complainant has used the domain name PEROTSYSTEMS.COM.
This website also receives significant traffic from computers. Through
the use and development, Complainant has gained valuable rights in the
domain name and mark PEROTSYSTEMS.COM. In order to protect its rights,
Complainant filed a U.S. Trademark and Service Mark application for the
mark in January 1999. The application seeks registration of the marks
for goods and services including corporate publications in the field of
computers, business consulting in the field of computer and related information
technology, communications services, computer and telecommunications systems
and design and developing, implementing, hosting and maintaining websites
for others by means of a global computer information network. The
application is currently pending in the U.S. Patent & Trademark Office.
5. Since 1998 Complainant has used the servicemark PEROT SYSTEMS in
relation to computer related services, including computer and telecommunications
systems integration. The mark was registered with the U.S. Patent
and Trademark Office in 1997, and is registered or pending registration
in forty (40) foreign countries.
6. On February 28, 1999, Respondent Registered with Network Solutions,
Inc. for a domain name ROSSPEROT.COM, which is the subject of this Complaint.
Respondent and Steven Weber have registered over 100 domain names including
domain name ROSSPEROT.COM.
7. Respondents domain name ROSSPEROT.COM is confusingly similar to
Complainants domain names and marks PEROT.COM, PEROTSYSTEMS.COM, and PEROT
SYSTEMS. Respondents use of Complainants domain names and mark
containing the name PEROT creates a likelihood of confusion and Complainants
trademark users and customers are likely to be confused into believing
that there is some affiliation, connection, sponsorship, approval or association
between Respondent and Complainant when, in fact, no such affiliation or
association exists.
8. Respondent has no rights or legitimate interests in the domain name
ROSSPEROT.COM due to the domain name consisting primarily of the name of
Complainants founder Ross Perot and Complainants domain names and marks
in which Respondent has no legitimate rights or interests. Moreover,
consumers seeking information concerning Complainant may easily key on
ROSSPEROT.COM looking for Complainant and would be surprised not to find
Complainants site. Complainant is the owner of PEROT.COM, PEROTSYSTEMS.COM
and PEROT SYSTEMS in which it has exclusive rights to use and license of
said marks.
9. Moreover, the evidence establishes that Respondent is merely redirecting
the traffic from ROSSPEROT.COM to FAMOLOGY.COM a site that provides FREE
Web-Based Email and appears not to have taken any steps to create any
legitimate interest in the domain name. Additionally, Respondents
primary business appears to be registering numerous domain names extensibly
primarily for the purpose of cybersquatting.
10. The domain name ROSSPEROT.COM should be considered as having been
registered by Respondent in bad faith due to the fact that circumstances
indicate that Respondent 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
mark, trademark or servicemark or to a competitor of Complainant for valuable
consideration in excess of Respondents documented out-of-pocket costs
directly related to the domain name. See Rule 4(b)(i).
11. The domain name ROSSPEROT should be considered has [sic] having
been registered by Respondent in bad faith due to the fact Respondent has
intentionally attempted to attract internet users to its website by creating
a likelihood of confusion with Complainants marks and domain names as
to the source, sponsorship, affiliation or endorsement of its website.
The unauthorized and continued use by Respondent in interstate commerce
of a domain name incorporating Complainants founders name as well as Complainants
domain name and marks constitutes a use of a false designation of origin
as well as a false description or representation that is likely to cause
confusion, mistake or deception as to (a) the affiliation, connection or
association between Complainant and Respondent and (b) the sponsorship
or endorsement of Respondents website by Complainant. See Rule 4(b)(iii).
12. Respondents activities constitute an infringement of Complainants
rights in its domain names and marks PEROT.COM, PEROTSYSTEMS.COM and PEROT
SYSTEMS and has caused and will continue to cause substantial and irreparable
harm to Complainant and its business reputation and good will. Complainant
demands that Respondent transfer the domain name ROSSPEROT.COM to Complainant.
3. CONCLUSION
The undersigned certifies that he has acted independently and has no
known conflict of interest to serve as the Arbitrator in this proceeding.
Having been duly selected and being impartial and neutral, the undersigned
makes the following findings and conclusions:
1. The domain name ROSSPEROT.COM
registered by Respondent on February 28, 1999 is confusingly similar to
Complainants domain names and marks PEROT.COM, PEROTSYSTEMS.COM and PEROT
SYSTEMS, for which the U.S. trademarks and service mark applications by
Complainant are pending before or have been obtained from the United States
Patent and Trademark Office. Complainant has all rights and interests
in its domain names and marks PEROT.COM, PEROTSYSTEMS.COM and PEROT SYSTEMS.
2. Respondent does not have
any substantial rights or legitimate interests in respect to the domain
name ROSSPEROT.COM.
3. Respondent has registered
and used the domain name ROSSPEROT.COM in bad faith.
4. Based upon the above findings and conclusions
and pursuant to Rule 4 (1) of the Rules of the Uniform Domain Name Dispute
Resolution Policy and the National Arbitration Forum Supplemental Rules
of ICANNs Uniform Domain Resolution Policy, I hereby Order that:
1. The domain name
ROSSPEROT.COM registered by Respondent DomainSale (Steven Weber) be transferred
forthwith to Complainant Perot Systems Corporation, and
2. Respondent DomainSale
(Steven Weber) shall cease and desist from any and all use of the domain
name ROSSPEROT.COM.
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