Terabeam Corporation v. Colin Goldman

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Terabeam Corp. v. Colin Goldman

Case No. D2001-0697

1. The Parties

Complainant is Terabeam Corporation ("Terabeam"), 2300 Seventh Avenue,

Seattle, Washington 98121, USA.

Respondent is Colin Goldman ("Goldman"), 1047 Fourth Street, Santa

Monica, California 90403, USA.

2. Domain Name and Registrar

The domain name at issue is: <tera-beam.com> (the "Domain Name").

The registrar is Internet Names Worldwide (the "Registrar"), Level

2, 120 King Street, Melbourne 3000, Australia.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

Terabeam’s Complaint by e-mail on May 24, 2001, and in hard copy on May 28,

2001. The Center verified that the Complaint satisfies the formal requirements

of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules"). Complainant made the required payment

to the Center.

On May 30, 2001, the Center transmitted via e-mail to the Registrar a request

for registrar verification in connection with this case. On May 31, 2001, the

Registrar transmitted via e-mail to the Center its response, confirming that

(1) a copy of the Complaint was sent to it by Complainant as required by Supplemental

Rule 4(b); (2) the Domain Name was registered through it; (3) Respondent

is the current registrant of the Domain Name; (4) the Administrative Contact

for the Domain Name is the Respondent and the Technical Contact for the Domain

Name is DNS Administrator, 216 W. Jackson Blvd., Suite 325, Chicago, IL 60606

[1]; (5) the Policy applies to the Domain Name; and (6) the

Domain Name is active.

On July 4, 2001, the Center transmitted the Notification of Complaint and Commencement

of Administrative Proceeding, together with a copy of the Complaint, via e-mail

with copy by courier (FedEx) and by facsimile to Respondent and to the Registrar

[2]. The Center advised that Respondent’s

Response was due by July 23, 2001, pointed out that the Response should be in

accordance with the Rules and the Supplemental Rules, and described the consequences

of a default if the Response was not sent by the due date. The Center also noted

that the Complainant had elected for a single panelist to decide this matter.

The requirements of Rule 2(a) having been satisfied, the formal date of the

commencement of this administrative proceeding, pursuant to Rule 4(c), is July 4, 2001.

No Response was received from Respondent by the July 23, 2001 deadline. On

July 25, 2001, the Center transmitted to Respondent, via e-mail, a Notification

of Respondent Default. The Center advised Respondent that (a) Respondent had

failed to comply with the deadline for submission of its Response and (b) the

consequences of default, including (1) appointment of a single panelist (per

the Complainant’s request); (2) the Panel would be informed of Respondent’s

default and would decide in its sole discretion whether to consider a Response

if submitted later; and (3) notwithstanding the default, the Center would continue

to send all case-related materials to Respondent.

No Response conforming to the Rules was received from Respondent, either by

the July 25, 2001 deadline or at any other time [3].

On August 14, 2001, the Center advised the parties, in accordance with Rule

6(f), of the appointment of Michael Albert, the undersigned, as the Panelist

in this case. Pursuant to Rule 15(b), the Center further informed the parties

that, absent exceptional circumstances, the Panel would forward a decision to

the Center by August 28, 2001.

On August 16, 2001, the Center transmitted the case file to the Panel.

4. Factual Background; Parties’ Contentions

a. The Trademark

The Complaint is based on Complainant’s alleged ownership of rights to the

mark TERABEAM, which Complainant claims to have used for communications goods

and services since 1997.

Complainant owns at least one federal registration for the TERABEAM mark. Complainant

provided the Panel with a printout from the U.S. Trademark Electronic Search

System ("TESS") of the United States Patent and Trademark Office ("USPTO"),

for its U.S. Reg. No. 2,398,305.

U.S. Reg. No. 2,398,305 is for the word mark TERABEAM in block letters. A block-letter

registration is the broadest claim to a word mark, in that it is "not …

restricted to any particular form or type." Exxon Corp. v. National

Foodline Corp., 579 F.2d 1244, 1247 (C.C.P.A. 1978). This registration issued

in 2000 for communications, namely, providing high speed optoelectronic transmission

of data, and claims a date of first use in 1997.

b. Jurisdictional Basis

The dispute is within the scope of the Policy, and the Panel has jurisdiction

to decide the dispute. A copy of the Registrar’s registration agreement, which

incorporates the Policy by reference, is appended as Exhibit B to the Complaint.

In Paragraph 11 of its Complaint, Complainant avers that each of the three

requirements of Paragraph 4(a) of the Policy have been satisfied.

c. The Complainant’s Contentions

Complainant asserts as follows:

- That Complainant has been providing communications goods and services in

commerce under the mark TERABEAM since 1997, and that it is known by the TERABEAM

mark around the world.

- That the Complainant owns registrations and applications for registrations

for TERABEAM in the United States and abroad.

- That Complainant operates a web site at the web address <www.terabeam.com>.

- That the Domain Name is identical to Complainant’s TERABEAM mark, and is

likely to cause confusion among consumers as to source or sponsorship.

- That Respondent has no legitimate interest in the Domain Name because (1) Respondent

is not commonly known by the Domain Name; (2) Respondent has acquired no

trademark or service mark rights in the Domain Name; (3) Respondent is not making

legitimate non-commercial or fair use of the Domain Name; and (4) Respondent

has not used or made demonstrable preparations to use the Domain Name in connection

with a bona fide offering of goods or services.

- That Respondent’s intent in registering the Domain Name was to seek commercial

gain. Specifically, Respondent placed at the web site corresponding to the Domain

Name a notice that the Domain Name is up for "auction," with a "starting

bid" of $500.

- That Respondent’s activity interferes with Complainant’s business and creates

a likelihood of confusion with Complainant’s mark as to source, sponsorship,

affiliation or endorsement of the web site.

- That Complainant’s legal representative attempted to contact Respondent twice,

but received no response from Respondent.

d. The Response

As noted above, the Respondent is in default pursuant to Rule 5(e), Rule 14

and Supplemental Rule 7(c) because no Response was received from Respondent

by the July 25, 2001 deadline.

Unlike in a U.S. court proceeding, however, a default does not automatically

result in a finding for the Complainant. Rather, under Paragraph 4(a) of the

Policy, it remains the Complainant’s burden to establish that all three of the

required criteria for a transfer of the Domain Name or other remedy have been

met

Under Rule 5(e) and Rule 14(a), the effect of a default by the Respondent is

that the Panel shall proceed to a decision on the Complaint. Under Rule 14(b),

the Panel is empowered to draw such inferences from the default as it considers

appropriate.

5. Discussion and Findings

a. Regulations Applicable to Consideration of the Merits

The Panel now proceeds to consider this matter on the merits in light of the

Complaint, the Response, the Policy, the Rules, the Supplemental Rules, and

other applicable legal authority, pursuant to Rule 15(a). In the Panel’s view,

given that both parties to this dispute appear to be based in the United States,

applicable authority shall include relevant principles of United States trademark

law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect

to the Domain Name, each of the following:

(i) The Domain Name is identical or confusingly similar to a trademark in which

Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain

Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative,

circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be

evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any

one of which, if proved by Respondent, would demonstrate Respondent’s rights

or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).

b. Effect of the Default

In this case, the Panel finds that as a result of the default, Respondent has

failed to rebut any of the factual assertions that are made and supported by

evidence submitted by the Complainant. The Panel does not, however, draw any

inferences from the default other than those that have been established or can

fairly be inferred from the facts presented to by Complainant and that, as a

result of the default, have not been rebutted by any contrary assertions or

evidence.

In particular, by defaulting and failing to respond, Respondent has failed

to offer the Panel any of the types of evidence set forth in Paragraph 4(c)

of the Policy from which the Panel might conclude that Respondent has any rights

or legitimate interest in the Domain Name, such as use or preparation to use

the Domain Name prior to notice of the dispute, being commonly known by the

Domain Name, or making legitimate noncommercial or fair use of the Domain Name.

c. Complainant’s Proof

(i) Domain Name Identical or Confusingly Similar to Trademark

Complainant has proven that it is the owner of trademark rights in the mark

TERABEAM. Complainant’s registrations of its mark(s) on the Principal Register

of the USPTO establish a presumption of validity of the marks under United States

law. See 15 U.S.C. § 1057(b); Avery Dennison v. Sumpton, 189 F.3d

868 (9th Cir. 1999). Additionally, the registrations constitute constructive

notice to all other parties of Complainant’s ownership of the marks. See

15 U.S.C. § 1072.

In comparing Complainant’s mark to the Domain Name, it is well established

that the generic top-level domain, in this case ".com," must be excluded

from consideration as being a generic or functional component of the Domain

Name.

The remaining terms, TERABEAM and TERA-BEAM, are essentially identical. This

panel agrees with the numerous distinguished WIPO panels that have found mere

addition (or deletion) of a dash ("-") within a mark not to constitute a substantive

change or obviate confusion. E.g., The Coca-Cola Co. v. Gamlebyen Invest

AS, Case No. D2000-1677 (WIPO February

14, 2001) (recognition of a mark "applies whether the trademark is rendered

with or without a dash"); Focus Do It All Group v. Athanasios Sermbizis,

Case No. D2000-0923 (WIPO October 6,

2000) ("Mere differentiation by the insertion of dashes ("-") still leaves

the two [marks] virtually identical."); Transamerica Corp. v. Inglewood

Computer Services, Case No. D2000-0690

(WIPO August 20, 2000) (finding <trans-america.com> to be "nearly

identical" to mark Transamerica "in that it differs only by the lower

case ‘t’ and the inclusion of a dash after the fifth letter in the word ‘transamerica’.").

Accordingly, the Panel finds that the Domain Name is virtually identical to

Complainant’s mark, and that confusion between the two would be likely, to the

extent any use were made of the Domain Name.

(ii) Whether Respondent Has Rights or Legitimate Interest in the Domain Name

There is no evidence in the record that Respondent has any legitimate interest

in the Domain Name. Complainant stated in the Complaint that attempts were made

to contact Respondent, at least one of which (a letter dated April 3, 2001)

communicated Complainant’s understanding that Respondent was not using the Domain

Name for an operational web site. Respondent did not respond to the April 3,

2001 letter [4]. Complainant further stated

in the Complaint that Respondent has no rights or legitimate interest in the

Domain Name. The Panel finds this contention to be credible, and it is in any

event unrebutted. The federal registration of Complainant’s mark, coupled with

the Domain Name’s overwhelming similarity to Complainant’s mark and corporate

name, and Respondent’s failure to advance any of the defenses provided in Paragraph

4(c) of the Policy lead this Panel to conclude that Respondent had no rights

or legitimate interest in the Domain Name.

(iii) Registration and Use in Bad Faith

Complainant’s third hurdle is to establish that Respondent has registered and

used the Domain Name in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the

registration and use of a domain name in bad faith. The first is acquisition

or registration of 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 trademark or service mark … or to a competitor of that

complainant, for valuable consideration in excess of [registrant’s] documented

out-of-pocket costs directly related to the domain name."

In this case, the Panel finds convincing evidence of this type of bad faith.

The screen shot of the web site corresponding to the Domain Name submitted as

Exhibit E to the Complaint shows that Respondent had put the Domain Name up

for "auction," with a "starting bid" of $500. On August

23, 2001, the Panel visited the site, and found that the Domain Name had a purported

"List Price" of $5,000 – ten times the "starting bid" originally

requested by Respondent [5].

That sale of the Domain Name for a profit was Respondent’s "primary"

purpose in registering it follows from the fact that he does not appear to have

had any other purpose. Respondent has no web site accessible at the Domain Name

(indeed, he merely has an advertisement attempting to sell it there), and no

evidence of record suggests that he is making any other use of the Domain Name.

Such inaction, particularly absent a plausible explanation, can be indicative

of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003

(WIPO February 18, 2000) (registration together with "inaction"

can constitute bad faith). This inaction, coupled with Respondent’s attempts

to sell the Domain Name for at least $500, and more recently for $5,000, are

sufficient, in the view of the Panel. Accordingly, the Panel finds bad faith

of the form illustrated by Paragraph 4(b)(i) of the Policy.

The second illustration of bad faith in the Policy occurs when the registrant

registers the domain name to prevent the trademark owner from reflecting the

mark in a corresponding domain name, particularly when Respondent has engaged

in a pattern of such conduct. Complainant does not allege that this was Respondent’s

intention in registering the Domain Name, nor does Complainant allege any pattern

of improper registrations by Respondent. Accordingly, the Panel does not find

this illustration applicable here.

The third illustration of bad faith is registration "primarily for the

purpose of disrupting the business of a competitor." On the facts of this

case, there is no evidence that Respondent is a competitor of Complainant, and

Respondent’s registration of the Domain Name does not appear to have disrupted

Complainant’s business. Accordingly, the Panel does not find this illustration

applicable either.

The fourth illustration, use of the domain name in an effort to attract, for

commercial gain, Internet users to a competing web site, does appear to be applicable

here. According to the screen shot supplied by Complainant at Exhibit E to the

Complaint, Respondent placed the following notice on the web site: "Terabeam,

Inc. is about to dominate all last-mile Internet traffic in the U.S. Within

two years, their name will be better known than Cisco. This highly recognizable

domain can be yours." Complainant avers that this notice creates a likelihood

of confusion as to source or sponsorship. More accurately, the Panel finds,

the notice evidences an intent to create such confusion in the future – or an

intent to enable another to create such confusion by using the Domain Name for

a business that could offer products or services similar to those offered by

Complainant. In the Panel’s view, such an intention falls within the scope of

Paragraph 4(b)(iv) of the Policy. That paragraph refers to intentional attempts

to attract Internet users "to your web site or other on-line location."

Inviting a prospective purchaser of the Domain Name to initiate confusion is

an inducement to create confusion through Respondent’s on-line location, in

violation of Paragraph 4(b)(iv) of the Policy.

In sum, the Panel concludes that Respondent has registered and used the Domain

Name in bad faith, as exemplified by illustrations (i) and (iv) in Paragraph

4(b) of the Policy [6].

6. Decision

In light of the findings and analysis by the Panel, the Panel decides that

Complainant has met its burden of proving: (1) the Domain Name is confusingly

similar to Complainant’s trademark(s) and/or service mark(s); (2) Respondent

has no rights and no legitimate interest in respect of the Domain Name; and

(3) the Domain Name has been registered and is being used by Respondent in bad

faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel

requires that the Domain Name be transferred to Complainant.

Michael A. Albert

Sole Panelist

Dated: August 24, 2001

Footnotes:

1. The Registrar provided a printout of the

information contained in its WHOIS database for the Domain Name, including the

Respondent’s postal address, telephone number and e-mail address.

2. The Center also sent the same items to

the required e-mail addresses as set out in Rule 2(a).

3. The only correspondence received by the

Center from Respondent was an August 2, 2001 letter alleging that this administrative

proceeding is a violation of his rights to "due process." Respondent’s

allegation is without merit. The registration agreement entered into by Respondent

when he registered the Domain Name through the Registrar expressly provides

(at Paragraph 4(a)) that the Registrant submits himself to this administrative

proceeding. Thus, this administrative proceeding has not been imposed upon Respondent

by an outside body as he alleged; rather, Respondent submitted himself, by contract,

to the jurisdiction of the Center. In any event, this proceeding affords Respondent

both notice and an opportunity to be heard. Respondent’s failure to take advantage

of that opportunity cannot be attributed to the Center or the Complainant. If

anything, Respondent’s letter makes it clear that he had actual notice of this

proceeding and has chosen to disregard it.

4. The record contains no evidence that Respondent

received the April 3 letter. However, Respondent declined to rebut the inference

that the letter was received. Pursuant to its discretion under Rule 10(c) to

"determine the admissibility, relevance, materiality and weight of the

evidence," the Panel infers from Respondent’s silence that the April 3

letter was received by Respondent.

5. While fact investigation is not normally

the role of judges or arbiters in adversarial proceedings, it appears to be

appropriate for panelists in UDRP cases to review, at least, the publicly-accessible

Internet web site (if any exists) associated with the disputed domain name(s).

Indeed, visits to web sites appear to be an accepted panel practice. E.g.,

Pharmacia & Upjohn Co. v. Brainbow, Inc., Case

No. D2000-1763 (WIPO Feb. 15, 2001); High-Class Distributions, S.r.l.

v. Online Entertainment Services, Case

No. D2000-0100 (WIPO May 4, 2000)).

6. Illustrations (i) and (iv) constitute

alternative grounds, each independently sufficient, for the Panel’s finding

of bad faith.