WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Endeavors Technology, Inc. v. Dick In Jar
Case No. D2001-0770
1. The Parties
The Complainant is Endeavors Technology, Inc., a corporation organized in the
State of California, United States of America (USA), with place of business
in Irvine, California, USA.
The Respondent is Dick In Jar, with address in Los Angeles, California, United
States of America (USA).
2. The Domain Name and Registrar
The disputed domain name is <endeavorstechnology.com>.
The registrar of the disputed domain names is Tucows, Inc., with business address
in Toronto, Ontario, Canada.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail,
received by the WIPO Arbitration and Mediation Center ("WIPO") on
June 9, 2001, and by courier mail, received by WIPO on June 13, 2001.
Payment by Complainant of the requisite filing fees accompanied the courier
mailing. On June 12, 2001, WIPO transmitted a Request for Registrar Verification
to the registrar, Tucows, Inc. (with the Registrar’s Response received by WIPO
on June 14, 2001).
(b) On June 15, 2001, WIPO transmitted Notification of the Complaint and Commencement
of the Administrative Proceeding to Respondent via e-mail, telefax and courier
mail.
(c) On July 8, 2001, WIPO transmitted notification to Respondent of its default
in responding to the complaint via e-mail.
(d) On July 10, 2001, WIPO invited the undersigned to serve as Panelist in
this administrative proceeding, subject to receipt of an executed Statement
of Acceptance and Declaration of Impartiality and Independence ("Statement
and Declaration"). On July 12, 2001, the undersigned transmitted by
fax the executed Statement and Declaration to WIPO.
(e) On July 13, 2001, Complainant and Respondent were notified by WIPO
of the appointment of the undersigned sole panelist as the Administrative Panel
(the "Panel") in this matter. WIPO notified the Panel that, absent
exceptional circumstances, it would be required to forward its decision to WIPO
by July 27, 2001. On July 13, 2001, the Panel received an electronic
file in this matter by e-mail from WIPO. The Panel subsequently received a hard
copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding
further submissions, waivers or extensions of deadlines, and the Panel has not
found it necessary to request any further information from the parties (taking
note of Respondent’s default in responding to the complaint). The proceedings
have been conducted in English.
4. Factual Background
Complainant, Endeavors Technology, Inc., has developed and offers for sale
computer software products and services in the peer-to-peer software industry.
Complainant’s principal software product is sold under the name "Magi".
Complainant maintains an active commercial Internet website under the name "Endeavors
Technology", at the Internet address (URL) <www.endeavors.com>. Under
that name, Complainant advertises and offers software for sale, and offers certain
software for downloading, by customers and prospective customers. (Complaint,
para. 12A & Annex D, and Panel visit of July 27, 2001). Complainant has
used the name "Endeavors Technology" in connection with the advertising
and promotion of its products since at least as early as 1998. (Complaint, para.
12A).
According to the registrar’s verification response to WIPO, dated June 14,
2001, Respondent is the listed registrant of the disputed domain name <endeavorstechnology.com>.
The Administrative Contact, at the same address, is "Markum, Ben".
According to the verification response, the record for the disputed domain name
was created on November 9, 2000, and was last updated on June 12, 2001.
The disputed domain name is currently used by Respondent to direct Internet
users to a website with home page headed "OnSystems, Inc." The "OnSystems,
Inc." website promotes and offers for sale peer-to-peer software products
that are directly competitive with Complainant’s peer-to-peer software products.
Respondent’s "OnSystems, Inc." website contains no disclaimer of affiliation
with Complainant. (Complaint, para. 12A & Annex E, and Panel visit of July
27, 2001).
An Internet website identified by the address (URL) <www.onsystems.com>
is identical to the website identified by the disputed domain name. The registrant
of <onsystems.com> has recently been changed to "interfriendly",
with the same address as "Dick in Jar". The registrant of <onsystems.com>
formerly was "Dick in Jar", the registrant of the disputed domain
name. (Id., para. 12A & Annex G).
On May 7, 2001, Complainant (through counsel) sent a cease and desist demand
to Respondent regarding its use of the disputed domain name (Letter from William
English to Ben Markum, dated May 7, 2001, Complaint, Annex H). In a telephone
conversation with Complainant’s President, Brian Morrow, of June 7, 2001, Respondent
offered to sell the disputed domain name to Complainant for $15,000. (Complaint,
para. 12C).
The Service Agreement in effect between Respondent and Tucows, Inc. subjects
Respondent to Tucows, Inc.’s dispute settlement policy, the Uniform Domain Name
Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with
implementing documents approved by ICANN on October 24, 1999. The Uniform Domain
Name Dispute Resolution Policy (the "Policy") requires that domain
name registrants submit to a mandatory administrative proceeding conducted by
an approved dispute resolution service provider, of which the Center is one,
regarding allegations of abusive domain name registration (Policy, paragraph
4(a)).
5. Parties’ Contentions
A. Complainant
Complainant asserts common law trademark rights in "ENDEAVORS TECHNOLOGY"
based on its use of that mark in commerce (see Factual Background, supra).
Complainant claims that the disputed domain name is identical or confusingly
similar to the mark in which it has rights.
Complainant states that Respondent has no rights or legitimate interests in
the disputed domain name. This is said to be evidenced by:
(1) Respondent’s misleading self-identification in its registration information;
(2) Respondent’s failure to use the domain name for a bona fide offer of goods
or services;
(3) Respondent has not been commonly known by the disputed domain name, and
(4) Respondent’s lack of fair or legitimate non-commercial use of the name.
Complainant alleges that Respondent registered and has used the disputed domain
name in bad faith. This is said to be evidenced by:
(1) Respondent’s use of the name to divert Internet users for commercial gain
to its website by creating confusion as to Complainant’s affiliation with the
site;
(2) Respondent’s disruption of Complainant’s business, and
(3) Respondent’s offer to sell the disputed domain name to Complainant at a
price substantially in excess of its out-of-pocket expenses related to the name.
Complainant requests the Panel to direct the registrar to transfer the disputed
domain name to it.
B. Respondent
Respondent has failed to respond to Complainant’s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy")
adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, (with implementing documents approved on October 24, 1999),
is addressed to resolving disputes concerning allegations of abusive domain
name registration and use. The Panel will confine itself to making determinations
necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process
requirements be met. Such requirements include that a respondent have notice
of proceedings that may substantially affect its rights. The Policy, and the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),
establish procedures intended to assure that respondents are given adequate
notice of proceedings commenced against them, and a reasonable opportunity to
respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary
to notify the Respondent of the filing of the complaint and initiation of these
proceedings, and that the failure of the Respondent to furnish a reply is not
due to any omission by WIPO.
Paragraph 4(a) of the Policy sets forth three elements that must be established
by a Complainant to merit a finding that a Respondent has engaged in abusive
domain name registration and use, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain
name; and
(iii) Respondent’s domain name has been registered and is being used in bad
faith.
Each of the aforesaid three elements must be proved by a complainant to warrant
relief.
Because the Respondent has defaulted in providing a response to the allegations
of Complainant, the Panel is directed to decide this administrative proceeding
on the basis of the complaint (Rules, paragraph 14(a)), and certain factual
conclusions may be drawn by the Panel on the basis of Complainant’s undisputed
representations (id., paragraph 15(a)).
Complainant has not registered the "ENDEAVORS TECHNOLOGY" mark on
the Principal Register at the USPTO (Footnote
1).Complainant’s asserted mark does not enjoy a presumption of secondary
meaning under federal law based on registration (Footnote
2).
Common law rights in a trademark or service mark may arise under the federal
Lanham Act or state law, (Footnote 3) and
a substantial number of decisions by administrative panels under the Policy
have been based on common law trademark or service mark rights (Footnote
4).The principal issue in this proceeding is whether Complainant has established
such common law rights.
Complainant’s proposed mark, "ENDEAVORS TECHNOLOGY" is suggestive
in that some imagination, thought or perception is required to determine the
nature of the product from the term (Footnote
5). As a suggestive mark, ENDEAVORS TECHNOLOGY is inherently distinctive.
Complainant has used the term in commerce, and Respondent has offered no evidence
of competing users of the term.
The remaining issue is whether Complainant has used the term "ENDEAVORS
TECHNOLOGY" as a trademark. To function as a trademark, a term must be
associated with a product. It is apparent that Complainant has principally used
the term "Magi" to identify its peer-to-peer networking software product.
For example, Complainant’s web pages state "Magi is the brand name Endeavors
Technology uses for its innovative P2P technology software suite". Complainant’s
principal use of the term "ENDEAVORS TECHNOLOGY" has been to identify
its business. The term has thus generally been used as its trade name.
The Panel is nevertheless persuaded that "ENDEAVORS TECHNOLOGY" has
been used sufficiently in connection with a product to be considered a trademark.
Complainant uses the term "ENDEAVORS TECHNOLOGY" on the home page
and subpages of its website on which it is offering its proprietary software
for sale or trial by Internet users, and it refers to its product, inter
alia, as "Endeavor’s peer-to-peer software". Complainant has tied
its business name to its product in advertising and promotion, even if its use
of this name has been secondary to another name (i.e. "Magi") associated
with the product.
Of considerable import here is that Respondent clearly anticipates that Internet
users seeking Complainant’s peer-to-peer software product will use the name
"ENDEAVORS TECHNOLOGY", either directly in an Internet address or
in a search engine, to find Complainant’s product. Respondent directs Internet
users who are seeking "ENDEAVORS TECHNOLOGY" software to its own competing
website (where it offers a product competitive with that of Complainant) using
the domain name <endeavorstechnology.com>. Respondent has gone to substantial
lengths to support Complainant’s claim that Internet users will associate its
proprietary product with "ENDEAVORS TECHNOLOGY", and not only (or
perhaps even primarily) with "Magi". The fact that consumers will
look for Complainant’s product under the term "ENDEAVORS TECHNOLOGY"
supports a finding that the term serves a trademark function in connection with
Complainant’s product.
The Panel determines that "ENDEAVORS TECHNOLOGY" is a trademark in
which Complainant has rights. The disputed domain name "endeavorstechnology.com"
directly incorporates Complainant’s mark. The elimination of space between terms
and the addition of the generic top level domain (gTLD) ".com" are
not material for purposes of comparing the disputed domain name and mark in
the context of this proceeding.
The Panel determines that the disputed domain name is identical to Complainant’s
mark within the meaning of paragraph 4(a)(i) of the Policy. Complainant has
therefore established the first element necessary for a finding that Respondent
has engaged in abusive domain name registration and use.
Respondent has used the disputed domain name for purposes of diverting Internet
users to a website at which it offers a product competing with that of Complainant.
Respondent was obviously aware of Complainant’s mark and product when it established
this use. Respondent has made no use of the disputed domain name that might
establish rights or legitimate interests in the name.
The Panel determines that Respondent has no rights or legitimate interests
in the disputed domain name within the meaning of paragraphs 4(a)(ii) and 4(c)
of the Policy. Complainant has thus established the second element necessary
for a finding of abusive domain name registration and use.
The Policy indicates that certain circumstances may, "in particular but
without limitation," be evidence of bad faith (Policy, para. 4(b)). Among
these circumstances are:
(1) that the domain name has been registered or acquired by a respondent "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 [respondent’s] documented out-of-pocket costs directly related to the domain
name" (id., para. 4(b)(i));
(2) that a respondent 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 respondent has] engaged in a pattern of such
conduct" (id., para. 4(b)(ii));
(3) that a respondent has "registered the domain name primarily for the
purpose of disrupting the business of a competitor" (id., para.
4(b)(iii)); and
(4) that a respondent "by using the domain name, … [has] intentionally
attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s]
web site or location of a product or service on [its] web site or location"
(id., para. 4(b)(iv)).
Respondent in this case has used the disputed domain name <endeavorstechnology.com>
to divert Internet users to a website for "OnSystems, Inc." that offers
products directly competitive with those of Complainant. There is no disclaimer
of association with Complainant. Respondent has made a deliberate effort to
attract for commercial gain Internet users to its website by creating a likelihood
of confusion with Complainant’s mark as to the source of a product on its website,
or as to Complainant’s affiliation with its website. This constitutes bad faith
within the meaning of paragraph 4(b)(iv) of the Policy.
Having made this determination, the Panel need not consider the other grounds
asserted by Complainant for a finding of bad faith on the part of Respondent.
Complainant has therefore established the third and final element necessary
for a finding that Respondent has engaged in abusive domain name registration
and use.
The Panel will therefore request the registrar to transfer the domain name
<endeavorstechnology.com> to the Complainant.
7. Decision
Based on its finding that the Respondent, Dick in Jar, has engaged in abusive
registration and use of the domain name <endeavorstechnology.com> within
the meaning of paragraph 4(a) of the Policy, the Panel orders that the
domain name <endeavorstechnology.com> be transferred to the Complainant,
Endeavors Technology, Inc.
Frederick M. Abbott
Sole Panelist
Dated: July 29, 2001
