Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use - Descriptive names.

Complainant was registrant of United States service mark and United States trademark for "network systems". Registrant registered the domain name, networksystems.com. Complainant alleged that its registered marks and the registered domain name were identical and that Respondent registered the domain name at issue in bad faith.

Held, Name not transferred

Complainant must establish both bad faith registration and bad faith use. 

Complainant points out the obvious identical nature of the domain name at issue and its trademarks and notes that Respondent has acknowledged actual confusion on the part of some members of the public who have sent email to Respondent or visited Respondent's website in search of the Complainant and its products. Because of this confusion, Respondent sought bids for sale of its domain name in May and June of 1999 from the public, including Complainant. The offer expired on June 30, 1999, and Respondent continues the use of the domain name in its business to the present. Respondent alleges that it has spent considerable sums in advertising its domain name and its corporate name.

As pointed out by the Respondent, the highly descriptive nature of the trademarks, which Complainant seeks to defend, results in more than 120,000 hits on an AltaVista search of "NETWORK SYSTEMS," few of which point to either Complainant or Respondent. In addition, Respondent notes more than fifteen other registered domain names with "networksystems" in their URL designations.

The domain name "networksystems.com" is identical or confusingly similar to the "NETWORK SYSTEMS" trademarks in which Complainant has rights. The Respondent has substantial rights and legitimate interests in respect of the domain name "networksystems.com."  The Respondent has not registered or used the domain name at issue in bad faith. Therefore, the domain name will not be transferred to the Complainant.
 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
National Arbitration Forum's Supplemental Rules
 

Registration Agreements referred to

Network Solutions Domain Name Registration Agreement, dated November 22, 1995
 

Panel Decision referred to
--

Carmody, Sole Panelist: -

1. The Parties

The Complainant is Storage Technology Corporation, 1560 Broadway, Suite 1200, Denver, CO 80202 ("Storage Technology" or "Complainant"). The Respondent is Network Systems, Inc., P.O. Box 3547, Peachtree City, GA 30269. 

2. The Domain Name and Registrar

The domain name at issue is networksystems.com. The domain name is registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170 ("NSI").

3. Procedural Findings

After reviewing the complaint, and determining it to be in administrative compliance, the National Arbitration Forum ("Forum") forwarded the Complaint to the Respondent on February 25, 2000 in compliance with Rule 2(a)[1] and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), the Forum immediately notified Network Solutions that the administrative proceeding had commenced. The Complaint and the Response were docketed and forwarded to the undersigned arbitrator for decision. 

4. Findings of Fact

On February 25, 2000, Network Solutions, Inc. confirmed that Respondent registered the domain name "networksystems.com" on November 22, 1995 under the registrant name Network Systems, Inc., P.O. Box 3547, Peachtree City, GA 30269, with Eric Langley designated Administrative Contact. Network Solutions acknowledged the commencement of this administrative proceeding and that Respondent is bound by the Network Solutions Service Agreement Version 4.0. Accordingly, Respondent agreed to resolve any dispute regarding its domain name registration pursuant to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. Neither the complainant nor the respondent contests the jurisdiction of the Forum or the undersigned arbitrator to resolve this controversy.

Complainant alleges, and Respondent does not deny, that it is the owner of two U.S. Trademark Registrations for " NETWORK SYSTEMS" covering various computer, communications and publication applications under Registration Numbers: 1,531,910 and 1,174,918. A date of first use for each is claimed to be February 19, 1974. The original Registrant of these trademarks in 1981 and 1989 appears to be "Network Systems Corporation" of Minneapolis, Minnesota [presumably unrelated to Respondent]. The Complainant became the owner of the trademarks by virtue of a merger with this Minnesota domiciled corporation effective September 20, 1995 and documented with the U.S. Patent and Trademark Office on December 16, 1996.

Complainant points out the obvious identical nature of the domain name at issue and its trademarks and notes that Respondent has acknowledged actual confusion on the part of some members of the public who have sent email to Respondent or visited Respondent's website in search of the Complainant and its products.

Because of this confusion, Respondent sought bids for sale of its domain name in May and June of 1999 from the public, including Complainant. The offer expired on June 30, 1999, and Respondent continues the use of the domain name in its business to the present.

Respondent points out by way of Exhibit and allegation that it was doing business in Georgia under the name "Network Systems, Inc." at least as early as January of 1994, in the course of selling goods and services associated with home entertainment and security systems. The current http://www.networksystems.com, et seq., web pages suggest an internet service provider business and DSL and T1 installation operation, still under the Network Systems, Inc. masthead. Respondent alleges that it has spent considerable sums in advertising its domain name and its corporate name.

As pointed out by the Respondent, the highly descriptive nature of the trademarks, which Complainant seeks to defend, results in more than 120,000 hits on an AltaVista search of "NETWORK SYSTEMS," few of which point to either Complainant or Respondent. In addition, Respondent notes more than fifteen other registered domain names with "networksystems" in their URL designations.

Accordingly, I find as matters of fact and pursuant to paragraph 4 of the Policy that:
a. The domain name "networksystems.com" is identical or confusingly similar to the "NETWORK SYSTEMS" trademarks in which Complainant has rights;
b. The Respondent has substantial rights and legitimate interests in respect of the domain name "networksystems.com;" and
c. Respondent has not registered or used the domain name at issue in bad faith.

5. 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, the undersigned makes the following findings and conclusion:

1. It is important to note that this proceeding is based upon the Rules and the Policy previously defined to which the parties contractually agreed to submit themselves in the event of a domain name dispute. I am bound to apply the Rules and Policy based upon the facts determined and not any notion of equity or interpretations of trademark law treating a different situation or dispute.

2. Respondent may rightfully continue in the use of its domain, "networksystems.com" and has in no manner acted in bad faith.

6. Decision
Based upon the above findings and conclusions, and pursuant to Rule 4(i) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "NETWORKSYSTEMS.COM," REGISTERED BY RESPONDENT NETWORK SYSTEMS GA, INC. NOT BE TRANSFERRED TO STORAGE TECHNOLOGY CORPORATION. 

Signed this 20th of March 2000 by Judge James A. Carmody (Retired), arbitrator. 
Honorable James A. Carmody
 

[1] Any references to "Rule" or "Rules" are to ICANN's Rules for Uniform Domain Name Dispute Resolution Policy and Uniform Domain Name Dispute Resolution Policy (the "Policy") as supplemented by the National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Resolution Policy.