X/Open Company Limited v. Marshall Sorenson

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

X/Open

Company Limited v. Marshall Sorenson

Case

No. D2002-0297

1. The Parties

The Complainant in this

administrative proceeding is X/Open Company Limited with its principal place

of business at Apex Plaza, Block A 2nd Floor, Forbury Road, Reading,

Berkshire RG1 1AX, United Kingdom. The Respondent is Marshall Sorenson whose

address is 9864 Grand Verde Way #1513, Boca Raton, FL 33428, United States of

America.

2. The Domain Name and

Registrar

The domain name in dispute

is <unix.org>. The domain name was registered by Respondent with Network

Solutions Inc. 505 Huntmar Park Drive, Hendon, VA 20170, United States of America.

3. Procedural History

On March 27, 2002, the

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

the Complainant by e-mail a Complaint for a decision in accordance with the

Uniform Policy for Domain Name Dispute Resolution. The Center received a hard

copy of the Complaint on April 3, 2002. On April 3, 2002 the Center forwarded

an Acknowledgement of Complaint to the Complainant. On April 5, 2002 the Center

forwarded a Request for Registrar’s Verification to Network Solutions Inc. On

April 8, 2002 the Registrar confirmed that the domain name <unix.org>

was registered by the Respondent Marshall Sorenson. The Center completed its

Administrative Compliance Check on April 22, 2002 and ascertained that the Complaint

was filed in compliance with the requirements of the Policy, Rules and the Supplemental

Rules and that payment had been properly made to the Centre.

On April 22, 2002 the Center

forwarded a Notification of Complaint to the Respondent by e-mail and courier.

The Center advised the Respondent that the Administrative Proceeding was commenced

on April 22, 2002 and that a response was due by May 12, 2002. The

Complainant in this proceeding elected for an Administrative Panel consisting

of a Sole Panelist. The Respondent's Response was received by the Center by

e-mail on May 15, 2002 and in hard copies on May 16, 2002.

Mr. Ross Carson was appointed

as the Sole Panelist and a Notification of Appointment of Administrative Panel

and Projected Decision Date of June 24, 2002 was issued by the Center on June

10, 2002. The case file was transmitted to the Panelist Mr. Ross Carson

on June 10, 2002.

4. Factual Background

Complainant X/Open Company

Limited is a software technology company involved in the development of all

operating systems, specifically a comprehensive open systems environment.

Complainant is the owner

of the trademark UNIX world-wide ("UNIX Marks"). X-Open used to be the exclusive

licensee of the UNIX marks. Under the terms of the license agreement X/Open

had the option to have the UNIX marks assigned to it. X/Open exercised its right

and is now the registered owner of the UNIX Marks.

The Complainant is the

owner of registrations or pending applications for UNIX in relation to computer

programs, computer related goods and computer related services in over seventy-five

countries throughout the world (Annex 3, pages 22 to 34). Copies of signed License

Agreements between X/Open and a number of licensees are attached marked as Annex

4. Among the licensees of X/Open are most of the leading computer companies

of the world including Unisys Corporation, Siemens Nixdorf Informationssysteme

AG, Sun Microsystems, Inc., Novell Inc., Hewlett-Packard Company, AT & T

Global Information Solutions, Bull S.A., International Business Machines Corporation

(IBM), Digital Equipment Corporation, The Santa Cruz Operation, Inc., Hitachi

Limited, Silicon Graphics, Inc., Stratus Computer, Inc., Dansk Data Elektronik

A/S, Fujitsu Limited, NEC Corporation and NCR Corporation. X/Open, its predecessors

in business, and licensees have made extensive use of the trademark UNIX throughout

the world in respect of computer operating systems, computer related goods and

computer related services. The extent of use of the mark UNIX is so extensive

that most major companies in the computer field are an approved user of the

trademark UNIX.

5. Parties’ Contentions

A. Complainant

Complainant contends that

(a) The disputed domain

name is identical to the Complainant’s UNIX Marks. The .org part of the domain

name should be disregarded as being of a generic nature.

(b) Respondent has no

rights or legitimate interests in the domain name. The word UNIX is an invented

word used in relation to computer software. UNIX is not a name which traders

would legitimately choose unless to create an impression of an association with

the Complainant. Complainant has not licensed or otherwise permitted the Respondent

to use any of the UNIX marks nor has it licensed or otherwise permitted the

Respondent to apply for or use any domain name incorporating any of the UNIX

marks.

(c) The domain name

has been registered in bad faith.

Complainant’s UNIX marks

are very well known and it is extremely unlikely that Respondent would not have

been aware of that.

By virtue of the wide

spread use and reputation of the UNIX trademark, members of the public and persons

in the industry would believe that the entity owning the domain name <unix.orgt>

was the Complainant or was in some way associated with or connected with the

Complainant.

Any realistic use of the

domain name must misrepresent an association with Complainant and its goodwill,

and results in passing off and trade mark infringement.

Complainant submits that

because Complainant's registration for the UNIX Marks in the U.S. and other

countries precede Respondent's registration of the domain name in dispute, Respondent

should be held to have constructive notice of the Complainant's mark at the

time of registering the domain name.

Complainant submits that

Respondent was under an obligation, prior to registration, to perform a Trade

Mark search. If Respondent had been acting in good faith he might have registered

a different domain name entirely. Complainant cites the decision in Chernow

Communications Inc. v. Jonathon D. Kimball, WIPO

Case No. D2000-0119, (May 18, 2000). A copy is provided as Annex 6 to the

Complaint.

Complainant contends that

the fact that the registration of the unix.org domain name has been parked since

August 20, 2001, a period of seven months from the domain name registration,

is evidence that Respondent does not intend to use the domain name for bona

fide purposes.

B. Respondent

Respondent contends that:

(a) The Respondent requests

the Panel to deny the remedies requested by the Complainant.

(b) The Respondent requests

that the Panel make a finding of reverse domain hijacking based on the preponderance

of evidence in the Response and the following:

(i) Complainant submitted

other complaints against the registering parties of <unix.com>, WIPO Case

No. D2002-0294, and <unix.net>, WIPO Case No. D2002-0296, on the same

date as this complaint. Respondent feels that the Complainant has been opportunistic

in this regard to group Respondent with other organizations by simply modifying

the unix.net complaint by replacing all occurrences of <unix.net> with

<unix.org>.

(ii) The lack of any

attempt on the part of Complainant to contact Respondent before submitting the

complaint to pursue a resolution to the dispute is evidence of the complaint

being submitted as an afterthought once the complaint against <unix.com>

and <unix.net> were prepared. The Respondent submits that the above facts

exhibit malice towards the Respondent, as well as abuse of the Policy.

RESPONSE TO STATEMENTS

AND ALLEGATIONS MADE IN THE COMPLAINT (Policy, para. 4(a), (b), (c); Rules,

para. 5)

The Respondent's first

submission is that the Complainant's rights in the UNIX trademark are not enforceable

due to obvious and widespread alleged non-enforcement of use of UNIX by others

resulting in the trademark becoming a generic identifier of the goods and services

provided under the trademark. The Respondent attached as Annex 2 and Annex 3

alleged instances of generic use of the trademark UNIX. Respondent submits that

complainant failed to enforce the trademark early on, and could not possibly

recover the trademark as an identifier of Complainant's goods and services at

this point. Respondent submits that the technology community widely uses the

term "unix" to refer to a type of operating system, not a brand of operating

system.

The Respondent contends

that the Complainant has failed to prove the three elements in Paragraph 4(a)

of the Policy.

With respect to Paragraph

4.a.(i) of the Policy, Respondent does not refute the allegation that the domain

name in dispute is identical to Complainant's trademark, but submits that the

trademark UNIX has become generic due to non-enforcement as stated above.

With respect to Paragraph

4.a.(ii) of the Policy Respondent refutes the allegation that Respondent has

no rights or legitimate interests in respect of the domain name in dispute.

The Respondent submits that the Complainant's Trademark License Agreement (see

Complaint Annex 3, Schedule 5 "Trademark Usage Guide" sec. 1.3 "Use of Trademarks

by Third Parties") permits third parties to use the UNIX trademark in articles

and for editorial use. The Respondent submits that it was the intention of Respondent

to build a non-commercial site of editorials and articles about and in support

of the UNIX system based operating systems and compatible software and such

activity was permitted by Complainant.

With respect to Paragraph

4.a.(iii) of the Policy which requires the Complainant to prove that the domain

name in dispute has been registered and is being used in bad faith the Respondent

made a number of submissions.

The Respondent purchased

the domain name in dispute for $5,000 USD and poses the question why would the

Respondent make such an expenditure without the intent to make a bona fide use

of the domain name. The Respondent restates Respondent's intention to develop

a non-commercial site for the domain name containing editorials and articles

in support of UNIX system-based operating systems and compatible software for

the technology community.

The Respondent submits

that Respondent started developing the website in August, 2001, immediately

after entering into the agreement to purchase the domain name in dispute. A

copy of the partially developed web page is attached to the Response and marked

Annex 5. The Respondent intended to follow the Complainant's guidelines for

third party use. The partially developed web page has a clearly visible attribution

to Complainant's ownership of the trademark UNIX as required in Complainant's

trade-mark license agreement for third parties. Respondent states that Respondent

intended to include hyperlinks to Complainant's web sites on its website. The

Respondent had to halt work on the website almost immediately after acquiring

the domain name in dispute. The partially developed web page has not been edited

since August 15, 2001, which was five days before the domain name was transferred

to Respondent's name.

Respondent submits that

he does not have a history of being a cybersquatter. Respondent states Respondent

owns the domain names owned by the Respondent's corporation Byterage, Inc. Respondent

submits that Respondent did not contact or solicit Complainant to sell Complainant

the domain name in dispute for profit.

Respondent submitted that

the Complainant has failed to establish evidence of registration and use in

bad faith (Paragraph 4.b of the Policy). The Respondent submits that there has

been no use of the domain name in dispute to date and therefore there could

not be a likelihood of confusion (Zuffa LLC v. LGRE, WIPO

Case No. D2001-0458, Annex 6 to the Response). The Respondent submits that

inference of future activities cannot possibly be used to satisfy Complainant's

burden of proof of bad faith since the alleged activities haven’t happened yet

(M.T.C. Inc. v. NetL@tino Inc., WIPO

Case D2002-0088, Annex 7).

The Respondent submitted

that there is no evidence that the Respondent offered to sell the domain name

to the Complainant for a sum in excess of Respondent's legitimate costs of acquiring

the domain name.

The Respondent attached

as Annex 9 to the Response a Network Solutions WHO IS Database for wild-card

searches which was able to search for and match over 2,300 currently registered

domain names from the .com, .net, and .org TLD's that contained the name "unix".

Respondent submits that the registrations set a fair precedent as to what the

Complainant considers to be acceptable use of the UNIX trademark. The Respondent

refers to the fact that a search of the ICANN UDRP Decisions database yielded

no decision of proceedings involving the term "unix" where Complainant was the

Complainant.

Respondent's next submission

appears to be one of acquiescence submitting that the Complainant has waited

nine years since acquiring the trade-mark UNIX before seeking to enforce the

trademark UNIX using the UDRP.

6. Discussion and Findings

Paragraph 15(a) of the

Rules instructs the Panel to "decide a complaint on the basis of the statements

and documents submitted in accordance with the policy, these rules and any rules

and principles of law that it deems applicable".

In accordance with Paragraph

4(a) of the Policy, the Complainant has the burden of proving three elements:

(i) That the Complainant

has rights in a trademark or service mark with which the Respondent's Domain

Name is identical or confusingly similar;

(ii) That the Respondent

has no rights or legitimate interests in the Domain Name; and

(iii) That the Domain

Name has been registered and is being used in bad faith.

6.1 Identical or Confusingly

Similar Trade-Marks and Domain Names

The Respondent does not

dispute the allegation that the domain name in dispute is identical or confusingly

similar to the Complainant's trademark UNIX. The domain name <unix.org>

is comprised of the Complainant's trademark UNIX together with the generic term

".org". The trade-mark UNIX is a created word and trademark of substantial inherent

distinctiveness.

The Respondent submits

that the trademark UNIX is unenforceable by reason of loss of distinctiveness

caused by alleged generic use by others resulting in the trademark becoming

an identifier of goods or services and not an identifier of goods or services

of the Complainant. The trademark UNIX has been registered in the United States

Patent and Trademark Office since as early as May 6, 1986 in relation to computer

programs under International Trademark Classes 9 and 38. The trademark UNIX

is a registered trademark or the subject of pending trademark applications in

seventy-five or more countries throughout the world. Copies of signed License

Agreements between X/Open and a number of licensees are attached and marked

as Annex 4. Amongst the licensees are many of the leading computer companies

of the world including Unisyi Corporation, Siemens Nixdorf Informationssyteme

AG, Sun Microsystems, Inc. Novell, Inc., Hewlett-Packard Company, AT&T Global

Information Solutions, Bull S.A., International Business Machines Corporation

(IBM), Digital Equipment Corporation, The Santa Cruz Operation, Inc., Hitachi

Limited, Silicon Graphics, Inc., Stratus Computer, Inc., Dansk Data Electronik

A/S, Fujitsu Limited, NEC Corporation and NCR Corporation amongst others. The

licensees are entitled to use the trademark UNIX in relation to manuals, training

articles, software and other information about the UNIX system.

Annex 5 to the Complaint

includes particulars of U.S. Trademark Registration Number 1,392,203 for the

Trademark UNIX. The particulars of the registration disclose that the Complainant

or its predecessors were Plaintiffs in Opposition proceedings against Serial

No. 73705420, UNIXU; Serial No. 74306860, UNIX; Serial No. 74362035, TEAMUNIX;

Serial No. 75410254, SYNTUNIX; Serial No. 75436911, @UNIX and Serial No. 75365208,

UBIX.

Particulars of United States

Trademark Registration No. 1,390,593 for the trademark UNIX states that the

Complainant or its predecessors in title were Plaintiffs in Opposition proceedings

involving Serial No. 73698917, UNIX; Serial No. 74399958, USIX; Serial No. 74340192,

LNX SYSTEMS and was the Plaintiff in Cancellation Proceedings against Serial

No. 73458534 for the trademark USA UNIX SYSTEMS ASSOCIATION.

In Annex 2 to the Response

the Respondent includes a printout of search results for "UNIX" at Google. Many

of the entries include the names of licensees of the UNIX trademark. Other entries

relate to reviews, features and commentary about the UNIX system. None of the

web addresses include "unix" alone in association with a gTLD or a ccTLD. Attached

as Annex 9 to the Response is a list of other registered domain names containing

"unix". None of the domain names in the list disclose a domain name consisting

of UNIX alone or together with a gTLD or a ccTLD.

The United States registrations

are prima facie evidence of the validity of the trademarks. EAuto, L.L.C.

v. Triple S. Auto Parts a/b/a/ Kung Fu Yea Enterprises, Inc., WIPO

Case No. D2000-0047. The evidence of the Respondent does show that the trademark

UNIX is not used alone without a descriptive qualifier and is not licensed or

authorized to be used alone without a descriptive qualifier. The UDRP Policy

and Rules are not intended as a forum to decide on loss of the validity of a

trademark registration for loss of distinctiveness. There is no opportunity

for a Complainant to respond to such an allegation. In any event having regard

to the Complainant's License Agreements and actions in defending its trademarks

referred to above, the Respondent's evidence presented in this proceeding is

insufficient to establish a loss of distinctiveness. The above conclusion is

of course of no precedential value should the Respondent wish to attack the

validity of the trademark UNIX in another proceeding.

6.2 The second matter

which the Complainant must prove is that the Respondent has no rights or legitimate

interest in the domain name in dispute. The Respondent submits that the Respondent's

demonstrated preparation to use the domain name in dispute is permitted by the

Complainant's Trademark License Agreement (see Complaint Annex 3, Schedules

5 of the "Trademark Usage Guide", s.1.3). The section provides that the trademark

may be used in editorials or articles where use of the trademark is either desirable

or unavoidable. Such use of trademarks is permitted without the requirement

for the user to be licensed, provided the rules in the Guide are followed. The

Guide states at page 41 that trademarks should be used as adjectives and not

as nouns. The domain name in dispute does not constitute a proper use of the

trademark as it is not followed by a noun explaining that the site is for editorials

and articles in support of the UNIX system based operating system and compatible

software.

The Panel finds that the

use of UNIX as part of the domain name not followed by a noun is a misuse of

the trademark not authorized by the Complainant. The evidence submitted by the

Respondent as seen in Annex 2 show the use of UNIX in combination such as UnixReview.com;

UNIX Reference Desk and UNIX Training a sponsored link, all being uses of UNIX

as an adjective in association with a noun defining the goods or services.

Annex 5 to the Response

is a partially developed unix.org web page. The partially developed web page

identifies UNIX as a registered trademark of The Open Group. Reviewing the partially

developed web page leads one to conclude that the web page is sponsored by The

Open Group.

6.3 The third matter

which the Complainant must prove is that the domain name has been registered

and is being used in bad faith. The trademark UNIX is a created word used in

association with an operating system. The trademark is well known to those involved

with operating systems. At the time of registration of the domain name the Respondent

was aware of the trademark. The Respondent's partially developed web page attributes

ownership of the trademark to the Complainant.

The Respondent has been

passively holding the domain name for over half a year while the Respondent

was involved with another matter. The Respondent states that it was Respondent's

intention to develop a non-commercial site for the domain name containing editorials

and articles about and in support of UNIX system-based operating systems and

compatible software for the technology community.

Paragraph 4 of the UDRP

Policy identifies, without limitations, circumstances that "shall be evidence

of the registration and use of a domain name in bad faith", for the purposes

of paragraph 4(a)(iii). As stated in Telstra Corporation Limited v Nuclear Marshmallows,

Case

No. D2000-0003 only one of these circumstances (paragraph 4(b)(iv), by necessity

involves a positive action post-registration undertaken in relation to the domain

name (using the name to attract custom to a web site or other on-line location.

The Panel in Telstra posed the question … "what circumstances of inaction (passive

holding) other than those identified in paragraph 4(b)(i)(ii) and (iii) can

constitute a domain name being used in bad faith. A remedy can be obtained under

the Uniform Policy only if those circumstances of the Respondent's passive holding

amounts to acting in bad faith.

The Administrative Panel

has considered whether, in the circumstances of this particular Complaint, the

passive holding of the domain name amounts to the Respondent acting in bad faith.

The particular circumstances of this case that lead to the conclusion that the

passive holding of the domain name is bad faith are:

(i) The Complainant's

trademark is a created inherently distinctive trademark.

(ii) The Complainant's

trademark is very well known in respect of an operating system and compatible

software for the technology community.

(iii) The Complainant

licenses the trademark to many of the leading companies in the computer world

for use in relation to the operating system and compatible software subject

to limitations as to the presentation of the trademark and quality of the system

or compatible software. The Complainant licenses third parties to use the trademark

as an adjective in association with a noun for articles, review and editorials.

The domain name in dispute <unix.org> is stated by the Respondent as intended

to be used in association with articles and reviews relating to the UNIX system.

The form of the domain name in which the domain name is registered using the

trademark as a noun is contrary to the Complainant's Policy for licensees and

third parties.

(iv) The Respondent

purchased the domain name in dispute for $5,000 U.S.D. from the previous owner.

The Respondent's stated intention is to develop a non-commercial site for the

domain name containing articles in support of UNIX system-based operating systems

and compatible software for the technology community. The home page of Respondent's

corporation Byterage, Inc. includes many commercial links including astalavista.box.sk

having links to a casino.

The Respondent's partially

developed <unix.org> web page which is attached as Annex 5 to the Response

features four references to UNIX as a registered trademark of the Complainant

and no references to the Respondent. Under the heading "Other valuable resources"

of the partially developed web site is a proposed linkage to <sendmail.org>,

a web site which includes commercial offers of products and services.

The inference from the

above evidence is that the Respondent's planned and partially developed web

site while it may include articles relating to the UNIX system is already designed

to contain links to commercial sites.

The Panel concludes that

the domain name has been registered and is being used in bad faith.

The Panel has considered

the Respondent's submissions on the subject of reverse domain hijacking. The

Complainant has in the past commenced opposition proceedings, cancellation proceedings

and proceedings under the UDRP Policy against others using the trade-mark UNIX

as a trademark or the dominant part of a domain name. The Panel concludes that

the Complainant has neither been opportunistic nor displayed malice towards

the Respondent in this proceeding. The submissions of reverse hijacking are

not supported by the evidence.

7. Decision

For the foregoing reasons,

the Panel decides:

(a) That the domain

name registered by the Respondent is confusingly similar to the trademark to

which the Complainant has rights;

(b) That the Respondent

has no rights or legitimate interests in respect of the domain name; and

(c) The Respondent's

domain name has been registered and is being used in bad faith.

Accordingly, pursuant to

Paragraph 4(i) of the Policy, the Panel requires that the registration of the

domain name <unix.org> be transferred to the Complainant.

Ross Carson

Sole Panelist

Dated: June

24, 2002

More cases by this complainant

• X/Open Company Limited v. Unix.net — D2002-0296 · unix.net · Transfer · 24 Jun 2002
• X/Open Company Limited v. Expeditious Investments — D2002-0294 · unix.com · Complaint denied · 31 Jul 2002