Endeavors Technology, Inc v. Dick In Jar

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

Footnotes:

1. See FactualBackground, supra. (back

to text)

2. See 15 USCS § 1057(b) (establishing presumption

of exclusive right to use based on registration). (back to text)

3. See, e.g., Century 21 Real Estate v. Billy Sandlin,

846 F.2d 1175 (9th Cir. 1988). (back to text)

4. See, among others by this sole panelist, Adobe

Systems Incorporated v. Domain OZ, WIPO

Case No. D2000-0057, decided March 22, 2000, and; Desert Schools Federal

Credit Union v. Symlink Communications, llc, WIPO

Case No. D2001-0528, decided July 4, 2001. (back to text)

5. The boundary line between arbitrary and suggestive marks

is not well defined. In this case, the descriptive term "technology"

is reasonably associated with computer software used for network functions,

and it is used in combination with the term "endeavors" meaning "strives

to achieve". The combination of terms "ENDEAVORS TECHNOLOGY"

may lead consumers to associate Complainant’s proposed mark with its principal

product. Arguably Complainant’s mark is arbitrary. Resolution of the question

whether Complainant’s mark is suggestive or arbitrary is not material to the

outcome of this proceeding. (back to text)