Avanade Inc. v. Robert Tansey

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avanade Inc. v. Robert Tansey

Case No. D2001-0824

1. The Parties

The Complainant is Avanade Inc., a corporation organized in the State of Delaware,

United States of America (USA), with place of business in Seattle, Washington,

USA.

The Respondent is Robert Tansey, with address in Roanoke, Texas, USA.

2. The Domain Name and Registrar

The disputed domain name is <avanadeconsulting.com>.

The registrar of the disputed domain name is Register.com, Inc., with business

address in New York, New York, USA.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a complaint by

e-mail received by the WIPO Arbitration and Mediation Center ("WIPO")

on June 22, 2001, and by courier mail received by WIPO on June 25, 2001.

Payment of the requisite filing fees accompanied the courier mailing. On June

26, 2001, WIPO transmitted a Request for Registrar Verification to the

registrar, Register.com, Inc. (with the Registrar’s Response received by WIPO

on June 26, 2001).

(b) On June 28, 2001, WIPO transmitted notification of the complaint and commencement

of the proceeding to Respondent via e-mail, telefax and courier mail.

(c) On July 12, 2001, Respondent’s response was received via e-mail by WIPO.

Respondent also transmitted its response to Complainant.

(d) On or about July 17, 2001, Complainant transmitted via e-mail a Reply to

Respondent’s response to WIPO and Respondent, accompanied by a request to the

Panel for leave to file this supplemental submission.

(e) On July 17, 2001, Respondent transmitted via e-mail to WIPO and Complainant

an indication of intention to reply to the supplemental submission by Complainant.

On or about July 20, 2001, Respondent transmitted via e-mail to WIPO and Complainant

a Response to Complainant’s Second Complaint.

(f) On July 20, 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 August 2, 2001, the undersigned transmitted via telefax

the executed Statement and Declaration to WIPO.

(g) On August 3, 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 August 17, 2001. The Panel received a hard copy of the file in this matter

by courier from WIPO.

(h) Following notification from the Panel of circumstances requiring an extension

of the date for decision in this matter, WIPO notified the parties that the

projected date for a decision in this matter would be extended.

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. The

proceedings have been conducted in English.

4. Factual Background

In February 2000, two business enterprises, Accenture LLP ("Accenture")

and Microsoft, Inc. ("Microsoft"), formed and incorporated in the

United States a joint venture enterprise named "Avanade Inc.", the

Complainant in this proceeding. The joint venture partners are reported to have

invested one billion U.S. dollars in this enterprise. (Complaint, para. 12 &

Annex 5)

On February 9, 2000, Complainant submitted an intent to use application at

the United States Patent and Trademark Office (USPTO) regarding the word service

mark "AVANADE" (ser. no. 75914037, filed Feb. 9, 2001) in international

class (IC) 42, covering information technology consulting services, as further

specified. This application was published for opposition, and a notice of allowance

has been issued by the USPTO. (Id., para. 18 & Annex 10)

On February 9, 2000, Complainant also submitted an intent to use application

at the USPTO regarding the stylized word and design service mark "A AVANADE/SYSTEMS.SOLUTIONS.SUCCESS"

(ser. no. 75914037, filed February 9, 2001) in international class

(IC) 42, covering information technology consulting services, as further specified.

This application was published for opposition, and the case file has been assigned

to an examining attorney. (Id.)

Complainant has applied for registration of the "AVANADE" mark in

numerous countries around the world. The "AVANADE" mark has been registered

in Australia, Chile, Peru and Switzerland. (Id., para. 19 & Annex

12, including certificates of registration)

On March 13, 2001, Accenture and Microsoft issued a joint press release concerning

initiation of the joint venture that constitutes Complainant. This announcement

was reported on widely by news media in the United States and other countries.

(Id., para. 14 & Annex 5). The activities of Complainant continue

to be reported extensively by news media worldwide. (Id., Annex 6)

Complainant maintains an active commercial website at the Internet address

(URL) <www.avanade.com>. (Id., Annex 4)

Complainant actively provides services in the design and implementation of

computer-based business management systems in the United States and around the

world. Complainant has expended substantial financial resources in establishing

offices in countries around the world. Complainant has expended substantial

financial resources in advertising and promoting the "AVANADE" mark.

According to the registrar’s verification response to WIPO, dated June 26,

2001, "rtansey" and "r tansey" is the listed registrant

of the domain name <avanadeconsulting.com>. The Administrative Contact,

at the same address, is "rtansey" and "r tansey". The registrar’s

verification response indicates that the record of the disputed domain name

was created on March 13, 2000, and was last updated on January 9, 2001.

As of the date of the filing of the complaint in this proceeding, there was

no evidence of activity at a website identified by the disputed domain name.

(Complaint, para. 20 & Annex 13). Respondent does not dispute that no use

of the disputed domain name has been made in connection with an active website.

On January 26, 2001, Respondent initiated contact via e-mail with Complainant

concerning the disputed domain name with the query "are you avanadeconsulting

too?" (e-mail from robrjt@hotmail.com to information@avanade.com, Complaint,

Annex 14). Following an exchange in which Complainant indicated that no such

site existed, Respondent indicated "It will be up. It is a critical review

site of Avanade." (e-mail from Rob Tansey to information@avanade.com, March

2, 2001, Id.)

On April 20, 2001, Complainant (via counsel) sent a cease and desist and transfer

demand to Respondent via certified mail. The aforesaid demand went unclaimed

by Respondent. (Id., Annex 15 & 16)

On May 5, 2001, Respondent sent an e-mail to Complainant with the subject "want

to buy avanadeconsulting.com?" and the text "a friend has it for sale"

(Id., Annex 17). On May 23, 2001, a follow-up e-mail from Respondent

advised "a critique of the ms based consulting business is what it is going

to be" (Id., Annex 18). On May 24, 2001, an e-mail from Respondent

to Candice Chevaillier of Complainant stated, "Hi Candice, He is open to

offers." (Id., Annex 18)

Regarding the correspondence in respect to the offer for sale of the disputed

domain name, Respondent has stated "I found out a younger family member

who knew what I was using the site for wrote email to Avanade using my aol account.

He has been reprimanded." (Response)

Respondent indicates that he has plans to use the disputed domain name for

a "non-profit ‘watchdog’ site about Avanade and its business practices"

(Id.)

The Service Agreement in effect between Respondent and Register.com subjects

Respondent to Register.com’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 WIPO is one, regarding

allegations of abusive domain name registration. (Policy, paragraph 4(a))

5. Parties’ Contentions

A. Complainant

Complainant asserts common law rights in the service mark "AVANADE"

in the United States, and indicates that it has applied for registration of

the mark in the U.S. Complainant indicates that the process of trademark registration

with the USPTO has reached an advanced stage, and that it is reasonable to assume

that registration will be granted in the near future.

Complainant indicates that the service mark "AVANADE" is registered

in several countries outside the United States, and that applications for registration

have been submitted in numerous countries.

Complainant states that its mark is "arbitrary".

Complainant indicates that it is using the AVANADE" mark in commerce in

the United States and worldwide, that it is actively advertising and promoting

its services under the mark and that the mark is recognized as identifying it

as the source of services.

Complainant asserts that the disputed domain name is confusingly similar to

its mark. It asserts that the disputed domain name incorporates its mark in

its entirety, and that addition of the term "consulting" does "nothing

to reduce its confusing similarity with Avanade’s mark".

Complainant argues that Respondent has no rights or legitimate interests in

the disputed domain name. Respondent has made no use of the name in connection

with an active website, and mere assertions of intended future use do not, of

themselves, establish legitimate rights.

Complainant states that because the disputed domain name contains no indication

that it is used for a critical expression site, Respondent cannot demonstrate

legitimate fair or noncommercial use.

Complainant indicates that Respondent has not been known by the disputed domain

name, and has no other claim to rights or legitimate interests in the name.

Complainant asserts that the following facts are evidence of bad faith on the

part of Respondent: (1) Respondent registered the disputed domain name on the

day Complainant’s formation was publicly announced, indicating that the registration

was deliberately intended to trade on Complainant’s goodwill; (2) the uniqueness

of Complainant’s mark indicates that Respondent did not derive the disputed

domain name independently; (3) Respondent’s knowledge of Complainant’s mark

suggests bad faith; (4) Respondent’s failure to use the disputed domain name

for over one year suggests the absence of an intention to use it in good faith;

(5) Respondent’s offer to sell the name to Complainant, while simultaneously

announcing plans to use it to criticize Complainant, affirmatively demonstrates

bad faith.

Complainant requests the Panel to direct the registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent refers to cases decided by administrative panels under the Policy

that have found use of a mark in a domain name in connection with critical expression

sites to constitute legitimate noncommercial or fair use.

Respondent "admit[s] the name is similar".

Respondent states "It is a non-profit ‘watchdog’ site about Avanade and

its business practices".

Respondent indicates that federal courts in the United States have found Microsoft

to have violated the Sherman Act, and that this makes its site "a necessity

for information and commentary". Respondent indicates that Complainant,

as a non-public company, will not be subject to disclosure rules associated

with public companies, and that this increases the need for a forum to publicize

critical views.

Respondent indicates that "An agent of Avanade called me on several occasions

and asked if they could advertise on the site. I responded ‘no’. They then said

it would be for a non profit group, and then I said I would consider it. I was

also asked if it was for sale, and responded negatively."

Respondent claims that offers for sale of the disputed domain name to Complainant

from his e-mail address were undertaken by a "younger family member"

without permission (see Factual Background, supra).

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. 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. Respondent has filed a detailed response to the complaint indicating

that he received notice and was afforded an adequate opportunity to respond.

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 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.

As a preliminary matter, the Panel notes that Complainant sought leave to file

a reply to Respondent’s response to its complaint, and tendered such a reply

to the Panel. Respondent rejoined with a tendered sur-reply. The Panel has decided

not to accept the supplemental submissions. Respondent’s response to Complainant’s

complaint did not assert facts or legal arguments that Complainant might not

reasonably have anticipated. Respondent’s sur-reply, tendered shortly after

Complainant’s reply, similarly raised no new facts or legal arguments, and is

also not accepted.

It is well established that registration of a mark is not a prerequisite to

establishing rights under the Policy, and that rights in a mark may be established

under common law [1]. The Panel

determines that Complainant has established common law rights in the service

mark "AVANADE" in the United States. The mark is arbitrary and is

determined to be distinctive without a showing of acquired secondary meaning.

Complainant has used the mark extensively in commerce in the United States,

including on the Internet. Complainant has been widely referred to in press

reports by the "AVANADE" mark. Respondent has not presented any evidence

to contradict Complainant’s assertion of common law rights.

While application for trademark registration at the USPTO does not confer a

presumption of rights in a mark, it is significant that Complainant’s intent

to use application for registration of the word mark "AVANADE" has

been published for opposition, and that a notice of allowance has been issued

by the USPTO. This indicates that the mark will be registered by the USPTO following

Complainant’s submission of a statement of use, [2]

absent some extraordinary intervening event.

In addition, Complainant’s "AVANADE" mark has been registered in

several foreign countries, and this also is evidence of its rights in the mark.

Respondent has conceded that the disputed domain name <avanadeconsulting.com>

is "similar" to Complainant’s mark. According to Respondent, this

similarity is accounted for by his intention to use the name to identify a website

expressing critical views regarding Complainant. In light of Respondent’s concession

regarding similarity, the Panel will not provide a detailed comparison of the

mark and disputed domain name. The Panel finds the mark and disputed domain

name confusingly similar in light of (1) the arbitrary character of the

mark, (2) the direct relationship between the added term "consulting"

and Complainant’s line of business, and (3) Respondent’s deliberate adoption

of Complainant’s mark as evidenced by the timing of the registration of the

domain name.

Complainant has met the burden of proving that Respondent is the registrant

of a domain name that is identical or confusingly similar to a service mark

in which the Complainant has rights, and it has thus established the first of

the three elements necessary to a finding that Respondent has engaged in abusive

domain name registration and use.

The second element of a claim of abusive domain name registration and use is

that the respondent has no rights or legitimate interests in respect of the

domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several

ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue. (Policy, paragraph 4(c))"

Respondent asserts rights or legitimate interests on the basis of his intention

to use it to host a website where information and views critical of Complainant’s

business practices may be publicly aired.

Under paragraph 4(c)(iii) of the Policy, a respondent may establish rights

or legitimate interests in a domain name based on the fact that "you are

making a legitimate noncommercial or fair use of the domain name." In a

period of more than a year between the registration of the disputed domain name

and the initiation of this proceeding, Respondent posted no content on a website

identified by the disputed domain name, and cannot be said to be "making"

use of the domain name. In an earlier proceeding under the Policy, this sole

panelist noted that a domain name registrant should not be expected to make

immediate use of a domain name in connection with an expressive site, and that

some reasonable time between registration and use may be anticipated

[3]. The Panel does not, however, consider a period of more

than one year to constitute a reasonable delay, particularly where the Respondent

has offered no concrete evidence of preparations to use the name for the purpose

indicated.

Moreover, the evidence of conduct in this case indicates that Respondent’s

motivation for registering the disputed domain name was not to create a critical

expression site, but rather to sell the disputed domain name to Complainant.

This demonstrated motivation, combined with Respondent’s failure to use the

disputed domain name, persuades the Panel that Respondent does not have legitimate

noncommercial expressive interests in the disputed domain name.

Respondent has failed to establish rights or legitimate interests in the disputed

domain name. Thus, Complainant has established the second element necessary

to prevail on its claim that Respondent has engaged in 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 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))

The evidence in this case indicates that Respondent (1) registered the disputed

domain name on the day of the public announcement of Complainant’s joint venture;

(2) made no use of the name in connection with an active website, and (3) initiated

contact with Complainant asking "are you avanadeconsulting too?".

Respondent’s initial contact is inconsistent with his subsequent contention

that he knew well of Complainant’s business, and intended to be critical of

that business.

Having established his presence with Complainant and having received a cease

and desist demand, Respondent’s e-mail address then generated a "want to

buy avanadeconsulting.com?" message. He suggested that a "friend"

had the domain name for sale, indicated that it was otherwise intended for use

in connection with a critical site, and indicated that the friend is "open

to offers".

The Panel does not accept Respondent’s claim that the offer for sale should

be overlooked because, unknown to him, it was undertaken by a "younger

family member". The course of conduct beginning with Respondent’s initial

contact is consistent with an intention to generate Complainant’s interest in

purchasing the name. The shift to "friend" and unidentified "family

member" conveniently followed Respondent’s receipt of a legal warning from

Complainant.

The Panel finds that Respondent primarily registered and used the domain name

in connection with an offer for sale to Complainant for consideration in excess

of his out-of-pocket costs in connection with the name. This constitutes bad

faith within the meaning of paragraph 4(b)(i) of the Policy.

Complainant has established the third and final element necessary for a finding

that the Respondent has engaged in abusive domain name registration and use.

The Panel will therefore request the registrar to transfer the domain name

<avanadeconsulting.com> to the Complainant.

7. Decision

Based on its finding that the Respondent, Robert Tansey, has engaged in abusive

registration and use of the domain name <avanadeconsulting.com> within

the meaning of paragraph 4(a) of the Policy, the Panel orders that the

domain name <avanadeconsulting.com> be transferred to the Complainant,

Avanade Inc.

Frederick M. Abbott

Sole Panelist

Dated: September 2, 2001

Footnotes:

1. See, e.g., Desert Schools Federal Credit

Union v. Symlink Communications, llc, WIPO

Case No. D2001-0528, decided July 4, 2001.

2. See J. Thomas McCarthy, 2 McCarthy

on Trademarks and Unfair Competition, § 19:132 (4th ed. 1996

and updated).

3. Wal-Mart Stores, Inc. v. Walsucks

and Walmarket Puerto Rico, WIPO Case No.

D2000-0477, decided July 20, 2000.

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