MIPS Technologies, Inc. v. International
Cyber Business Services, I
Claim Number: FA0504000463134
Complainant is MIPS Technologies, Inc. (“Complainant”),
represented by Mary L. Shapiro, of Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111.
Respondent is International Cyber
Business Services, I (“Respondent”), 24 Canton Road, Akron, OH 44312.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mipstechnologies.com>, registered with Bulkregister,
LLC.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 15, 2005.
On
April 15, 2005, Bulkregister, LLC confirmed by e-mail to the National
Arbitration Forum that the domain name <mipstechnologies.com> is
registered with Bulkregister, LLC and that Respondent is the current registrant
of the name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
April 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 5, 2005
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@mipstechnologies.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 11, 2005, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the National Arbitration Forum has discharged its responsibility
under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (the “Rules”) “to employ reasonably available means calculated to
achieve actual notice to Respondent.” Therefore, the Panel may issue its
decision based on the documents submitted and in accordance with the ICANN Policy,
ICANN Rules, the National Arbitration Forum’s Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <mipstechnologies.com>
domain name is identical to Complainant’s MIPS TECHNOLOGIES mark.
2. Respondent does not have any rights or legitimate
interests in the <mipstechnologies.com> domain name.
3. Respondent registered and used the <mipstechnologies.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant has
used the MIPS TECHNOLOGIES mark in connection with embedded processor
development services and related products since at least as early as 1998.
Complainant holds numerous worldwide trademark registrations for the MIPS
TECHNOLOGIES mark, including U.S. Reg. No. 2,881,941 (filed June 25, 1999;
issued September 7, 2004), which is on the Principal Register of the United
States Patent and Trademark Office. Complainant has promoted its marks and
protected its trademark rights throughout the world.
Respondent
registered the <mipstechnologies.com> domain name on August 6,
2003. The domain name resolves to a website that has no substantive content and
claims to be under construction. Respondent is not licensed to use
Complainant’s mark.
Paragraph 15(a)
of the Rules instructs this 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 view of
Respondent’s failure to submit a response, the Panel shall decide this
administrative proceeding on the basis of Complainant’s undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
established that it has rights in the MIPS TECHNOLOGIES mark through
registration with the United States Patent and Trademark Office and through
continuous use of the mark in commerce since 1998. See Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive and
that a respondent has the burden of refuting this assumption).
The <mipstechnologies.com>
domain name is identical to Complainant’s MIPS TECHNOLOGIES registered
trademark. The domain name fully incorporates the mark while simply removing a
space and adding the “.com” generic top-level domain (“gTLD”). The removal of a
space and the addition of a gTLD do not distinguish the domain name from
Complainant’s mark. Thus, the Panel finds that the domain name is identical to
Complainant’s mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to submit a response in this proceeding. In the absence of a response,
the Panel accepts as true all reasonable allegations contained in the Complaint
unless clearly contradicted by the evidence. Complainant alleges that
Respondent lacks rights and legitimate interests in the <mipstechnologies.com>
domain name. Neither Respondent nor the evidence contradicts this allegation.
Furthermore, because Respondent failed to submit a response, Respondent has not
proposed any set of circumstances that could substantiate its rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See
Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat.
Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of a complaint to
be deemed true); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that a complainant’s allegations are
true unless clearly contradicted by the evidence); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent failed to invoke any circumstance which could demonstrate any rights
or legitimate interests in the domain name).
The <mipstechnologies.com>
domain name resolves to a website that contains no substantial content other
than a statement that the website is under construction. The Panel finds that
linking a domain name to a website that merely claims to be under construction
does not constitute a legitimate noncommercial or fair use of the domain name
under Policy ¶ 4(c)(iii). Moreover, no evidence before the Panel suggests that
Respondent has made any preparations to use the domain name in connection with
a bona fide offering of goods or services under Policy ¶ 4(c)(i). See Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding that
the “under construction” page hosted at the disputed domain name did not
support a claim of rights or legitimate interests under Policy ¶ 4(a)(ii));
see also Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the
respondent’s use of the disputed domain name to
display an “under construction” page did not constitute a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii)); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when the respondent
declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires the
respondent to show 1) ‘demonstrable’ evidence of such preparations to use the
domain name, and 2) that such preparations were undertaken ‘before any notice
to [the respondent] of the dispute’”).
No evidence
before the Panel suggests that Respondent is commonly known by the <mipstechnologies.com>
domain name. The domain name’s WHOIS information indicates that the
registrant of the disputed domain name is known as “International Cyber
Business Services, I” and is not known by the second-level domain that is
identical to Complainant’s MIPS TECHNOLOGIES mark. Moreover, Respondent is not
licensed to use Complainant’s mark. Thus, Respondent lacks rights and
legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the
respondent’s WHOIS information implies that the respondent is ‘commonly known
by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Respondent has
not used the <mipstechnologies.com> domain name for any purpose
since the domain name was registered almost two years ago. The Panel finds that
Respondent has engaged in passive holding, which evidences Respondent’s lack of
rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See
Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001)
(finding no rights or legitimate interests where the respondent made no use of
the infringing domain names); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum
July 25, 2000) (finding that the respondent’s failure to develop the site
demonstrated a lack of legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
While each of
the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad
faith use and registration of the domain name, additional factors can also be
used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive.”).
Respondent has
made no use of the <mipstechnologies.com> domain name since the
domain name was registered almost two years ago. The Panel finds that
Respondent has engaged in passive holding, which evidences that Respondent
registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). See
Phat Fashions v. Kruger, FA 96193
(Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even
though the respondent has not used the domain name because “[I]t makes no sense
whatever to wait until it actually ‘uses’ the name, when inevitably, when there
is such use, it will create the confusion described in the Policy”); see
also Caravan Club v. Mrgsale, FA
95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use
of the domain name or website that connects with the domain name, and that
passive holding of a domain name permits an inference of registration and use
in bad faith).
Respondent’s
registration of the disputed domain name, which is identical to Complainant’s
mark, suggests that Respondent knew of Complainant’s rights in the MIPS TECHNOLOGIES
mark. Additionally, Complainant’s trademark registrations on the Principal
Register of the United States Patent and Trademark Office gave Respondent
constructive notice of Complainant’s mark. Thus, the Panel finds that
Respondent chose the <mipstechnologies.com> domain name based on
the distinctive and well-known qualities of Complainant’s mark, which evidences
bad faith registration and use under Policy ¶ 4(a)(iii). See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
was “inconceivable that Respondent could make any active use of the disputed
domain names without creating a false impression of association with
Complainant”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum
Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when the
respondent reasonably should have been aware of the complainant’s trademarks,
actually or constructively.”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <mipstechnologies.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 19, 2005
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