The Complainant is Linear Technology Corporation, Milpitas, California, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Chicago, Illinois, United States of America.
The Respondent is Spiral Matrix, Eldoret, Kenya.
2. The Domain Name and Registrar
The disputed domain name <linearelectronics.com> (the “Disputed
Domain Name”) is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com
(the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2006. On June 7, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name at issue. On June 7, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On June 12, 2006, the Center asked for confirmation via e-mail of the expiry date of the Disputed Domain Name. On June 12, 2006, the Registrar confirmed the expiry date of the Disputed Domain Name as requested.
3.2 The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 4, 2006.
3.4 The Center appointed Matthew S. Harris as the
sole panelist in this matter on July 11, 2006. The Panel finds that it was properly
constituted. The Panel has submitted the Statement of Acceptance and Declaration
of Impartiality and Independence, as required by the Center to ensure compliance
with the Rules, paragraph 7.
4. Factual Background
4.1 The Complainant is a US company registered in Delaware which designs, manufactures and markets a broad line of standard high performance integrated circuits used by major communications, computer and industrial companies worldwide. The company markets over 7,500 products to over 15,000 original equipment manufacturers, employs approximately 3,200 people worldwide and made over one billion dollars in sales last year with a 41% net profit.
4.2 The Complainant is the owner of trademarks at the United States Patent and Trademark Office for graphic representations of ‘Linear Technology’ (Reg. No. 2773279), ‘Linear’ (Reg. No. 2719252), ‘LT Linear Technology’ (Reg. No. 2771195) and the word mark ‘Linear Technology’ (Reg. No. 2771194). In addition, the Complaint owns registrations for the word mark ‘Linear Technology’ in Italy and France and registrations for the graphic representation of ‘Linear Technology’ in Italy, France, Australia, Benelux, China, Czech Republic, Denmark, the EU, Finland, Germany, Hong Kong, India, Indonesia, Ireland, Japan, the Republic of Korea, New Zealand, Norway, Russia, Singapore, Sweden, Switzerland, Taiwan, Thailand, Turkey and the UK (together, the “Linear Marks”).
4.3 In addition, the Complainant is the registrant and owner of the domain names <linear.com> and <linear-tech.com>, registered on March 20, 1995 and August 29, 1995 respectively. The Complainant’s principal website is at “www.linear.com”.
4.4 The legal status of the Respondent is unclear.
4.5 The Respondent registered the Disputed Domain Name on 22 March 2006.
4.6 A portal page operates from the Disputed Domain Name which links to various commercial websites grouped under various headings. The page contains the words “Buy This Domain! Find Out How Click Here!” Clicking on these words leads to a website at “www.kenyatech.com” where an offer can be made for the Disputed Domain Name.
4.7 On April 18, 2006, the Complainant sent a cease
and desist letter to the Respondent via email and Federal Express, asking the
Respondent to transfer the Disputed Domain Name to the Complainant along with
any similar domain names. The letter was returned because the address listed
for Spiral Matrix was “inaccurate” (according to the Complainant)
and the Respondent did not answer the Complainant’s e-mail.
5. Parties’ Contentions
A: Complainant
5.1 The order in which the Complainant makes its submissions in the Complaint is at times a little odd. In particular, the Complainant makes a number of allegations under the heading “Identical or Confusingly Similar” which more naturally belong elsewhere in the Complaint. Nevertheless, the Complainant’s overall case is reasonably clear and can be summarized as follows:
Identical or Confusingly Similar
5.2 The Complainant contends that the Disputed Domain Name is virtually identical or confusingly similar to the LINEAR Marks which are well known and famous throughout the world and possess a strong secondary meaning signifying the Complainant and its products.
5.3 Therefore, the Panel finds that Disputed Domain Name is confusingly similar to trademarks in which the Complainant has rights.
Rights or Legitimate Interests
5.4 The Complainant has not licensed or otherwise permitted the Respondent to use its marks or any domain name incorporating them.
5.5 The Respondent is not commonly known by the Disputed Domain Name, has not acquired any trademark or service mark right to the Disputed Domain Name and, to the best of the Complainant’s knowledge, has not applied for or obtained any trademark or service mark registrations for the Disputed Domain Name.
5.6 Given the fame of the LINEAR Marks the Complainant contends that the Respondent at the time of registration of the Disputed Domain Name had “probable actual knowledge of Complainant’s rights in LINEAR Marks”. In addition to any actual knowledge the Respondent may have of the LINEAR Marks, the Respondent is also claimed to have had constructive notice of the LINEAR Marks since at least 2002, when the Complainant registered the ‘Linear’ device with the United States Patent and Trademark Office.
5.7 The Complainant believes that the Respondent obtained the Disputed Domain Name in order to create a likelihood of confusion and attract, for commercial gain, Internet users to the Disputed Domain Name.
5.8 Therefore, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Registered and Used in Bad Faith
5.9 The Complainant asserts that the Respondent registered
and uses the Disputed Domain Name to unlawfully divert and siphon off visitors
seeking the Complainant’s website. These users are instead directed to
links for websites whose owners have paid the Respondent for placement. The
Complainant quotes Elsevier B.V. v. Domain Deluxe, NAF Case No. FA0402000237520
at p.3 in support of its contention that the Respondent’s use of the Disputed
Domain for such purposes “qualifies as neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use of the domain
name” and from National Association of Professional Baseball Leagues,
Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO
Case No. D2002-1011 at p.5 that this is “itself evidence of bad faith”.
5.10 The Complainant submits that, as a result of
the Complainant’s registration of the LINEAR Marks and their strong reputation
throughout the world, “it is not possible to conceive of a plausible circumstance
in which the Respondent could legitimately use the domain name” (Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003 at p.9). Further support is quoted from Pancil LLC
v. Domain Deluxe, WIPO Case No. D2003-1035
at p.3:
“…the Panel finds that it is inconceivable that Respondent chose the contested domain name without knowledge of Complainant’s activities and the name and trademark under which Complainant is doing business”.
5.11 The Complainant also contends that the Respondent is a serial cybersquatter and has been the respondent in the following UDRP proceedings:
Dr Ing. h.c.F. Porsche AG v. Kentech, Inc. a.k.a.
Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a Spiral Matrix and Domain
Purchase, NOLDC, Inc., WIPO Case No. D2005-0890;
In all these proceedings the panel ordered the transfer of the relevant domain name.
5.12 Therefore, the Disputed Domain has been registered and is being used in bad faith.
B. Respondent
5.13 The Respondent did not file a response and is
therefore in default pursuant to Paragraph 5(e) and paragraph 14 of the Rules.
6. Discussion and Findings
6.1 Under paragraph 5(e) of the Rules, if the Respondent does not submit a Response and in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. In addition, under paragraph 14 of the Rules, where a party fails to comply with any provision or requirement of the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
6.2 This Panel does not find there to be any exceptional circumstances within Paragraph 5(e) of the Rules which would prevent the Panel from determining the dispute.
6.3 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to establish its case in accordance with paragraph 4(a) of the Policy and prove that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (para 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name (para 4(a)(ii)); and
(iii) the Disputed Domain Name has been registered and is being used in bad faith (para 4(a)(iii)).
6.4 The Panel has reviewed the Complaint and annexes and its findings are set out below.
A. Identical or Confusingly Similar
6.5 In accordance with paragraph 4(a)(i) of the Policy, the Complainant must establish two separate elements in order to satisfy paragraph 4(a)(i) of the Policy:
(i) the Complainant must provide evidence that it has rights in a trademark or service mark;
(ii) the Complainant must show that the Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which it has rights.
6.6 The Complainant relies on the LINEAR Marks in relation to the first element of paragraph 4(a) and has provided evidence of registration of the LINEAR Marks in their respective countries of registration.
6.7 With regards to the second element of paragraph 4(a), the ‘.com’ of the Disputed Domain Name can be disregarded. That leaves ‘Linear Electronics’ (it not being possible to include spaces between words in domain names) as the name to be compared with the LINEAR Marks for the purposes of assessing whether the Disputed Domain Name is identical or confusingly similar to the LINEAR Marks.
6.8 Whilst the Complainant relies upon 27 registered trademarks the best of these so far as the Complainant is concerned in this case are as follows:
LINEAR, a stylized mark of the word “Linear” in capitals and in black on a white background, reg. no. 2719252 in the USA;
LINEAR TECHNOLOGY, a word mark, reg. no. 2771194 in the USA;
LINEAR TECHNOLOGY, a word mark, reg. no. 415240 in Italy;
LINEAR TECHNOLOGY, a word mark, reg. no. 1224149 in France.
6.9 In the circumstances, none of the marks relied upon by the Complainant
are identical to the Disputed Domain Name (see for example the comments in Minibar
North AmericaInc. v. Ian Musk & GEMS Global Electronic Minibar Systems
AS, WIPO Case No. D2005-0035 as to
the treatment of device marks which incorporate words under the Policy).
6.10 Are the marks listed above confusingly similar to the Disputed Domain Name? The answer to that question appears to be yes. The US mark reg. no. 2719252 comprises the word ‘Linear’ albeit only portrayed in a stylized (somewhat Art Nouveau) script. The addition of the word ‘electronics’ appears at first sight to be descriptive of the Complainant’s goods. The phrases ‘Linear Technology’ and ‘Linear Electronics’ also have a high degree of similarity.
6.11 However, the difficulty here is that it is not clear to what extent ‘Linear’ and ‘Linear Electronics’ are generic terms. From a brief search on the internet conducted by the Panel, ‘Linear Electronics’ appears to describe the area of electrical engineering governing electronic devices in which the output varies in direct proportion to the input.
6.12 In addition, whilst the Complainant alleges that the LINEAR Marks have acquired ‘secondary meaning’, it is not alleged that either the terms ‘Linear’ and ‘Linear Electronics’ specifically have acquired secondary meaning distinctive of the Complainant’s goods and services.
6.13 Nevertheless, on balance the Panel holds that the Complainant succeeds
in this particular case under this heading. In the Panel’s view the Complaint
has just made out a prima facie case of confusing similarity and the
Respondent has not brought forward any evidence or argument to the contrary.
In coming to that conclusion the Panel also bears in mind various UDRP decisions
that suggest that the confusing similarity test involves a “low threshold”
(for example, Asset Marketing Systems, LLC v. SilverLining, WIPO
Case No. D2005-0560).
6.14 The Panel therefore concludes that the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.15 The Panel accepts the Complainant’s contentions that the Respondent is not known by the Disputed Domain Name (or for that matter by the name ‘Linear Electronics’) and has no trademark or service marks in such names.
6.16 The Complainant then goes on to assert that the Respondent had constructive and probable actual knowledge of the LINEAR Marks when registering the Disputed Domain Name and that the Respondent obtained the Disputed Domain Name intentionally to attempt to attract Internet users who would be otherwise destined for the Complainant’s own website.
6.17 The Panel accepts that if the Complainant can show that the Disputed Domain Name was registered with a view to trading off the goodwill of the Complainant, then in the absence of any other evidence to suggest any legitimate right or interest in the Disputed Domain Name on the part of the Respondent, this will usually be sufficient to satisfy paragraph 4(a)(ii) of the Policy. As the Panel discusses in greater detail below in the context of bad faith, the Complainant has indeed made out a prima facie case that the Disputed Domain Name was registered with the intention of trading off the Complainant’s reputation. There is no Response before the Panel in which any legitimate right or interest is suggested and nor is such an interest apparent from the manner in which the Disputed Domain Name has been used to date. The Panel therefore finds that the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.18 For the Complaint to succeed, the Panel must be satisfied that the Disputed Domain Name was both registered and is being used in bad faith by the Respondent (paragraph 4(a)(iii) of the Policy).
6.19 The Complainant contends that the Respondent registered and is using the Disputed Domain Name to “unlawfully divert and siphon off visitors seeking Complainant’s web site” and that the Respondent must have been aware of the Complainant and its marks because of the Complainant’s registrations for, and wide reputation in, the LINEAR Marks. Therefore, the Disputed Domain Name was registered in bad faith and continues to be used in bad faith.
6.20 It is convenient first to address the Complainant’s allegations
of constructive notice. These are rejected by the Panel. As is clear from numerous
decisions the doctrine does not apply where the parties to proceedings are not
both from the USA, see, for example, Staples, Inc., Staples The Office Superstore,
Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO
Case No. D2004-0537 and Sallie Mae, Inc. v. ChenHuang, WIPO
Case No. D2004-0880. Further, the recent decision of the three person panel
in Advanced Drivers Education Products and Training, Inc v. MDNH, Inc.
(Marchex), NAF Case Number: FA0509000567039 makes clear that even where both
parties are from the USA, “constructive notice (of trademark rights) is
not enough under the Policy” to satisfy the requirement of bad faith.
The Panel goes on to say that:
“The Policy makes no mention of constructive notice being enough to satisfy this requirement…[and]…if Complainant’s position were adopted, it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously-registered trademark, since constructive notice could be found in every such case. Such a result would be inconsistent with both the letter and the spirit of the policy, which requires actual bad faith”.
6.21 There are cases which suggest that in unusual circumstances a limited
version of the doctrine of constructive notice may have a role to play (see
for example Sibyl AveryJackson v. Jan Teluch,WIPO
Case No. D2002-1180 and Mobile CommunicationService Inc. v. Webreg,
RN,WIPO Case No. D2005-1304) but
these cases are controversial and in any event no such unusual circumstances
exist in the current case. In short, the doctrine of constructive notice, even
if not entirely dead in UDRP proceedings, does not assist the Complainant.
6.22 Further, the Panel does not accept that the use of the decisions in Telstra
CorporationLimited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003 and Pancil LLC v. Domain Deluxe, WIPO
Case No. D2003-1035 help the Complainant in this case. In Telstra the panel
stated that it was “not possible to conceive of a plausible circumstance
in which the Respondent could legitimately use the domain name” in question.
Similarly, in Pancil, the panel found it “inconceivable that Respondent
chose the contested domain name without knowledge of Complainant’s activities
and the name and trademark under which Complainant is doing business”.
The current case is not one in which the Complainant has brought forward evidence
that the Domain Name is necessarily exclusively referable to the Complainant.
6.23 Nevertheless, the Panel concludes that the Complainant has on balance made out a prima facie case to answer on the question of bad faith. The Panel comes to this decision by virtue of:
(i) the size and international extent of the Complainant’s business is such that it is not implausible that the Respondent was aware of the Complainant at the time it registered the Disputed Domain Name;
(ii) the Complainant’s undisputed contention that the Respondent had “probable knowledge” of the Complainant’s activities and name;
(iii) the fact that the Complainant contends that the Respondent is a serial
cybersquatter. Indeed it would appear that there are other cases in addition
to those identified in the Complaint in which the Respondent has been held to
have made abusive registrations, for example Educational Testing Service
(“ETS”) v.Spiral Matrix,WIPO
Case No. D2006-0505, Troi Torain v. Spiral Matrix, NAF Case Number
FA0603000664982 and Electronics For Imaging, Inc. v.Spiral Matrix,
NAF Case Number FA0604000672430. In short, the Respondent has a history of identifying
domain names associated with other entities with a view to selling them domain
names and/or diverting Internet users to their own website to obtain financial
advantage. Such similar fact evidence is something that a panel is entitled
to rely upon where otherwise there may be some doubt as to the motives of the
Respondent’s registration; and
(iv) the evidence of the Complainant that the address for the Respondent is
a false one (see Ceyx Technologies v. Ceyx.Com, WIPO
Case No. D2001-0681 as an example of this being taken into account by a
panel).
6.24 In the absence of any evidence from the Respondent to the contrary, the
Panel therefore accepts that the Disputed Domain Name was registered with knowledge,
and with the intention of taking advantage, of the Complainant’s trade
mark rights. Accordingly, the Panel finds that the Disputed Domain has been
registered and used in bad faith and that the Complainant has made out Paragraph
4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <linearelectronics.com> be transferred to the Complainant.
Matthew S. Harris
Sole Panelist
Dated: July 18, 2006
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