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1. The Parties
The Complainant is Sweeps Vacuum & Repair Center, Inc., a corporation
organized and existing under the laws of the State of New York, United
States of America, having its principal place of business at 705 Warren
Street, Hudson, New York, United States of America.
The Respondent is Nett Corp., a corporation with an address at 7113
Lake Basin Road, Tallahassee, Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <sweeps.com>, which domain name is registered
with Network Solutions, Inc. ("NSI"), based in Herndon, Virginia, United
States of America.
3. Procedural History
3.1 A Complaint was submitted electronically to the WIPO Center on January
5, 2001, and the signed original together with four copies forwarded by
express courier was received on January 8, 2001. An Acknowledgment
of Receipt was sent by the WIPO Center to the Complainant, dated January
11, 2001.
3.2 On January 12, 2001, a Request for Registrar Verification was transmitted
to the registrar, Network Solutions, Inc. ("NSI") requesting it to: (1)
confirm that the domain name at issue is registered with NSI; (2) confirm
that the person identified as the Respondent is the current registrant
of the domain name; (3) provide the full contact details (i.e., postal
address(es), telephone number(s), facsimile number(s), e-mail address(es))
available in the registrar’s Whois database for the registrant of the disputed
domain name, the technical contact, the administrative contact and the
billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution
Policy (the "Policy") is in effect; (5) indicate the current status of
the domain name.
3.3 On January 15, 2001, NSI confirmed by reply e-mail that the domain
name at issue is registered with NSI, is currently in active status, and
that the Respondent is the current registrant of the name. The registrar
also forwarded the requested Whois details, and confirmed that the Policy
is in effect.
3.4 The WIPO Center determined that the Complaint was not in formal
compliance, and on January 16, 2001, the WIPO Center transmitted to the
Complainant a Request for Amendment to the Complaint. On January
17, 2001, the WIPO Center received electronically and on January 22, 2001
in hard copy a copy of the Amended Complaint.
3.5 Upon further review, the WIPO Center determined that the Amended
Complaint was not in formal compliance, and on January 18, 2001, the WIPO
Center transmitted to the Complainant a Request for Second Amendment to
the Complaint. On January 18, 2001 the WIPO Center received electronically
and January 22, 2001, in hard copy, a copy of the Second Amended Complaint.
3.6 Upon further review, the WIPO Center determined that the Complaint
as twice amended (hereinafter the "Complaint") satisfies the formal requirements
of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy
(the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name
Dispute Resolution Policy (the "Supplemental Rules"). The Panel has
independently determined and agrees with the assessment of the WIPO Center
that the Complaint is in formal compliance with the requirements of the
Policy, the Uniform Rules, and the Supplemental Rules. The required
fees for a single member Panel were paid on time and in the required amount
by the Complainant.
3.7 No further formal deficiencies having been recorded, on January
24, 2001, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”) was transmitted to the Respondent
(with copies to the Complainant, NSI and ICANN), setting a deadline of
February 12, 2001, by which the Respondent could file a Response to the
Complaint. The Commencement Notification was transmitted to the Respondent
by courier and by e-mail to the e-mail addresses indicated in the Complaint.
In any event, evidence of proper notice is provided by the evidence in
the record of the Respondent’s participation in these proceedings.
3.8 A Response was received electronically on February 12, 2001, and
in hardcopy on February 14, 2001. The Respondent requested a three-member
Panel and included its portion of the necessary fees. An Acknowledgment
of Receipt (Response) was sent by the WIPO Center on February 14, 2001.
3.9 On February 13, 2001, the WIPO Center received a request from Complainant
to file a Reply to the Response, and on February 28, 2001, the WIPO Center
received electronically and on March 2, 2001, in hardcopy a Reply to the
Response.
3.10 On March 28, 2001, the WIPO Center Sent a Notification of Panel
Appointment, appointing David Sorkin, Esq., Roderick Thompson, Esq., and
M. Scott Donahey, Esq., all of whom had previously submitted Statements
of Acceptance and Declarations of Impartiality and Independence.
M. Scott Donahey was designated Presiding Panelist.
4. Factual Background
4.1 Complainant registered the service mark and design SWEEPS with the
United States Patent and Trademark Office ("USPTO") in connection with
retail store services featuring vacuum cleaners. The application
for registration was filed on December 9, 1999, and the registration issued
on October 10, 2000. The registration shows a first use in commerce
on January 23, 1990. The complainant has a second registration with
the USPTO for the same mark and design in connection with the same services,
which registration issued March 7, 2000. Complaint, Annex C.
4.2 Respondent registered the domain name at issue on September 11,
1999. Complaint, Annex A.
4.3 Respondent has also registered numerous other domain names, the
vast majority of which are purely descriptive in nature and not apparently
similar or identical to registered marks. Complaint, Annex E.
4.4 Respondent has used the domain name at issue to resolve to a web
site on which is located a directory page featuring links to various sites
involving sweepstakes and related games. Complaint, Annex D.
Respondent's web site is operated as an affiliate of a locator program
operated by GoTo.com, Inc. Respondent entered into a contract with
GoTo.com, Inc. to provide such services in April 2000, and Respondent receives
a share of the advertising revenue realized by GoTo.com, Inc. as compensation.
Response, Annex 2.
4.5 On November 9, 2000, Complainant sent Respondent a cease and desist
letter to which Respondent did not reply. Complaint, Annex F.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered as a domain
name a mark which is identical and/or confusingly similar to the service
marks registered and used by Complainant, that Respondent has no rights
or legitimate interests in respect of the domain name at issue, and that
Respondent has registered and is using the domain name at issue in bad
faith. Complainant claims Respondent has registered more than 50
domain names.
5.2 Respondent denies that the domain name is identical or confusingly
similar to Complainant's service marks, because Complainant's marks include
a design and because Complainant's marks are merely descriptive.
Respondent asserts that it has rights and legitimate interests in respect
of the domain name, and that Respondent's registration and use are in good
faith, although Respondent admits it has registered more than 400 domain
names.
6. Discussion and Findings
Although Complainant submitted a Reply without having yet received approval
from the Panel (see, Uniform Rule 12), since the Reply was received prior
to the transmittal of the file to the Panel, in this instance the Panel
elects to exercise its discretion to receive and consider the Reply.
Paragraph 15(a) of the Uniform Rules instructs the Panel as to the principles
the Panel is to use in determining the dispute: “A Panel shall 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.”
Since both the Complainant and Respondent are domiciled in the United
States, and since United States’ courts have recent experience with similar
disputes, to the extent that it would assist the Panel in determining whether
the Complainant has met its burden as established by Paragraph 4(a) of
the Policy, the Panel shall look to rules and principles of law set out
in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove
each of the following:
(1) that the domain name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant
has rights; and,
(2) that the Respondent has no rights or legitimate interests in respect
of the domain name; and,
(3) that the domain name has been registered and is being used in bad
faith.
We must first determine whether the domain name at issue is identical
or confusingly similar to a mark in which Complainant has rights.
The facts that Complainant's service mark includes a design and is suggestive,
bordering on descriptive are indications of a weak mark. The fact
that the mark is weak, however, does not mean that Respondent's domain
name is not identical or confusingly similar to Complainant's mark.
In addition, graphic elements, such as the Sweeps design, not being reproducible
in a domain name, need not be considered when assessing identity or confusing
similarity. See EFG Bank European Financial Group SA v. Jacob Foundation,
WIPO Case No. D2000-0036, section 6(b)(i) (finding that the domain name
was identical to the trademark where the text of the name was identical
and only the graphic elements which cannot be reproduced in the domain
name were left out). The Panel finds that the domain name at issue
is identical to Complainant's service mark.
The Policy provides that a respondent can demonstrate rights to and
legitimate interests in respect of the domain name by showing "before any
notice to [Respondent], [Respondent's] 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 service." Policy, Paragraph
4(c)(i). At least six months prior to receiving Complainant's cease
and desist letter, Respondent had agreed to and had begun using the domain
name at issue in conjunction with a legitimate locator service. See
Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case
No. D2000-0029, Section 6(b) (finding that the name should not be transferred
where Respondent provided bona fide goods and services prior to any notification
of dispute). Moreover, Respondent was using the domain name not in
the trademark sense, but in the descriptive sense, describing the types
of businesses (sweepstakes related) listed on the directory page.
This Respondent is entitled to do. See CRS Technology Corporation
v. Condenet, Inc., NAF Case No. FA93547 (finding that where the registrant
is using the domain name to communicate some aspect of the services it
provides, then the first to register a domain name containing a generic
or descriptive mark should prevail absent bad faith and a lack of legitimate
interest).
Complainant argues that Respondent engaged in a pattern of registering
many domain names and that this supports a conclusion of bad faith or lack
of legitimate interest in the name. While a large number of domain
name registrations (such as the 400 held by Respondent) may be relevant,
under these circumstances, that pattern of registration does not lead to
the conclusion that Respondent’s behavior with respect to the domain name
in question is not legitimate. The evidence does not establish that
Respondent registered the names in order to sell them to trademark owners
or to trade off the goodwill of trademark owners. In fact, most of
the names registered by Respondent are generic terms that do not correspond
to trademarks. As to <sweeps.com>, there is no indication that Respondent
knew of Complainant or its mark at the time of registration. Instead
it appears that Respondent registered the domain name in question as the
recognized shortened version “sweeps” of the generic term “sweepstakes.”
Accordingly, the Panel finds that Respondent has rights to and legitimate
interests in respect of the domain name at issue.
Because the Complainant has failed to prove the second of the three
requirements, the Panel has no need to determine further issues in order
to decide this case.
7. Decision
For all of the foregoing reasons, the Panel decides that the domain
name registered by Respondent is identical to the mark in which the Complainant
has rights, but that the Respondent has rights to or legitimate interests
in respect of the domain name at issue. Accordingly, the relief requested
in the Complaint is denied.
M. Scott Donahey
Presiding Panelist
David Sorkin
Roderick Thompson
Panelists
Dated: April 13, 2001
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