International Data Group, Inc.
v.
Maruyama & Co., Ltd.
[Indexed as: Data Group v. Maruyama]
[Indexed as: E-COMPUTERWORLD.COM]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0420
Commenced: 12 May 2000
Judgement: 26 June 2000
Presiding Panelist: William R. Cornish
Domain name - Domain name dispute resolution policy - Trademark -
Identical - Legitimate interests - Bad faith.
Complainant owns the mark COMPUTERWORLD, and also owns the domain
name COMPUTERWORLD.COM. It's marks are registered in many countries
and are used primarily for its trade newspapers. Respondent registered
the domain name e-computerworld.com.
Held, Name Transferred to Complainant.
There is likelihood of confusion between the names since the only
difference is the addition of the now common ‘e' at the beginning of the
name. Respondent defaulted and therefore did not show any legitimate
interests or rights in the domain name.
The domain name was used and registered in bad faith. Respondent's
primary intention in registering the name was to transfer the name in exchange
for valuable consideration. This is evidenced by Respondent's allegations
that it should be compensated for work on the front-end and back-end parts
of the name. It can be inferred that Respondent was preparing to
attract users to its site by creating confusion with Complainant's marks.
Respondent offers no explanation or rebuttal.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Cornish, Panelist: -
1. The Parties
Complainants: International Data Group, Inc., of 5 Speen Street, Framingham,
MA 01701, USA.
Respondent: Maruyama & Co. Ltd., of Unit 3110, 31/F, Cable TV Tower,
9 Hoi Shing Road, Tsuen Wan, NT, Hong Kong.
2. The Domain Name and Registrar
E-COMPUTERWORLD.COM, registered in the name of the respondent (Administrative
Contact: Gilman Lee) by Network Solutions of Herndon VA 20170, USA.
3. Procedural History
The Complaint in Case D 2000 0420 was filed on May 12, 2000.
The WIPO Arbitration and Mediation Center has found that:
- the complaint was filed in accordance with the requirements of the
Rules and Supplemental Rules for the Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements.
The Panelist accepts these findings and finds that:
the Complaint was properly notified in accordance with the Rules, paragraph
2(a) in that the Complaint was duly transmitted by email and fax and was
sent by courier to the Respondent, naming the Administrative Contact, Mr
Gilman Lee, as recipient. A series of emails were then sent to the WIPO
Arbitration and Mediation Center, with copies to the Complainant, by a
Mr Wilson Ng, stating that he acts for E-Business Asia (Holdings) Ltd,
but apparently also acting on the Respondent's behalf. These make clear
that the Complaint was received by Mr Ng and those for whom he acts.
No Response to the Complaint was filed in due time.
Notification of this Default was given on June 14, 2000 to the Respondent
by Email and Courier.
The Administrative Panel was properly constituted.
The Panelist submitted a Statement of Acceptance and Declaration of
Impartiality and Independence.
There have been no further submissions in the Case since the Notice
of Default in Response.
The date scheduled for issuance of a decision is: June 30, 2000.
No extensions have been granted or orders issued in advance of this
decision.
The language of the proceedings is English.
4. Factual Background
(1) The Complainant is registered proprietor of the following trade
and service marks in the USA:
COMPUTERWORLD, registered on September 17, 1968 for trade newspapers
in Class 38
COMPUTERWORLD, registered on September 22, 1992, for certain services
in Class 35; and on January 17,1995, for further services within that Class.
(2) The Complainant has submitted a schedule indicating that COMPUTERWORLD
(sometimes with a design) is registered as its mark in some 70 countries
of the world. It uses its marks primarily for its trade newspaper which
contains information relating to computers, computing and information technology.
It first published the paper in 1967.
(3) The Complainant also owns the domain names, COMPUTERWORLD.COM (registered,
November 15, 1993), COMPUTERWORLD.Net (registered, April 17,1998, as well
as others registered after the Respondent's date of registration.
(4) The Respondent registered the Domain Name in issue on October 12,
1999.
Parties' Contentions
A. Complainant
The Complainant asserts that the Respondent's Domain Name in issue creates
a likelihood of confusion with the marks which it uses for its trade paper,
and in which it has substantial goodwill; that the Respondent's Website
is not active; and that accordingly the respondent has no legitimate interest
in holding the Domain Name. Accordingly the Complainants seek transfer
of the Domain Name in issue to itself.
B. Respondent
The Respondent has not filed a response and the Dispute has therefore
to be determined on the basis of the Complainants' assertions. Apparently
on the Respondent's behalf, however, certain informal statements have been
made which will be referred to below.
6. Discussion and Findings
Since the Respondent's Domain Name differs from the Complainant's marks
only by the addition of the now common "E-", there is considerable likelihood
of confusion of the Domain Name with the Complainant's business. The Respondent
has chosen not to respond to the allegations against it other than by the
email messages sent by Mr. Wilson Ng. Assuming that these are to be understood
as made with the Respondent's authority, they demonstrate:
(i) that at first the Respondent's intention was to cancel the Domain
Name Registration in its name (messages of May 27, 2000 and June 1,2000);
(ii) that it subsequently asserted that the Complainant had no entitlement
to its marks because of its use of two common words and that therefore
it would not infringe the marks or any copyright;
(iii) that the original registration of the Domain Name had been made
alongside other similar registrations, all ending in "world.com";
(iv) that this was part of a business plan to establish websites under
each of these domains for purposes unspecified;
(v) that, if therefore it were to surrender ownership of the Domain
Name, it should be offered compensation not merely for the cost of registration
but for work on the front-end and back-end parts of "e-ComputerWorld.com"
(Message of June 3, 2000).
The Panelist notes these assertions and equally the fact that there
has been no formal Response to the Complaint. He concludes that the domain
name has been registered and is being used in bad faith, consisting of
acquisition primarily for the purpose of transferring the domain name to
the Complainants for valuable consideration in excess of costs directly
related to the domain name,
as distinct from work on the Website. He also infers that the Respondent
was preparing to use the domain name so as intentionally to attempt to
attract, for commercial gain, Internet users to the web site, by creating
a likelihood of confusion with the Complainants' marks and business name
as the source, sponsorship, affiliation or endorsement of that web site.
No explanation has been offered even informally of how the registered Name
and Website would be used for a non-confusing purpose.
7. Decision
The Panelist decides, in accordance with the Uniform Domain Name Resolution
Policy, Paragraph 4:
(i) that the domain name in dispute is confusingly similar to the registered
trade and service marks of the Complainant;
(ii) that the Respondents has no rights or legitimate interests in respect
of the domain name; and
(iii) that the Domain Name has been registered and is being used in
bad faith.
The Panel accordingly requires that the domain name E-COMPUTERWORLD
be transferred forthwith to the Complainant, International Data Group,
Inc.
