ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Names
The Complainant is Cisco Systems, Inc., a corporation having its main offices at 170 West Tasman Drive, San Jose, California, the United States of America. The Respondent is Mike Haag, an individual giving an address at 4724 Copperfield Circle, Granite Bay, California, United States of America. The contested domain names are cisco-online.com and cisco-online.net. Both of the contested domain names are registered with Network Solutions, Inc., in Herndon, Virginia, United States of America.
2. Procedural History
The Complaint in this matter was filed on-line through eResolution's website on November 7, 2000. The hardcopy of the Complaint Form and annexes were received by eResolution on November 14, 2000. Payment in the prescribed amount for a single member panel was received on November 7, 2000.
The Clerk at eResolution confirmed the identity of the Registrar for the contested domain names, verified the Registrar's Whois Database and confirmed all the essential contact information for the Respondent, verified that the contested domain names cisco-online.com resolved to an active website and that cisco-online.net did not, and verified that the Complaint was administratively compliant. The eResolution Clerk sent an email to the Registrar and requested a copy of the Registration Agreement for the disputed domain names, which agreement was received on November 9, 2000.
On November 14, 2000, the Clerk transmitted a copy of the Complaint Form and the Required Cover Sheet in accordance with paragraph 2(a) of the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules"). This date is the official commencement date of the administrative proceeding. While the email and fax copies of the complaint which were sent to the Respondent were either undeliverable or unsuccessful, the documents which were sent registered mail with proof of service through the Canada Post was successfully delivered to the Respondent. No Response was ever received via eResolution's web site or in hardcopy.
On December 7, 2000, the eResolution Clerk contacted M. Scott Donahey and requested that he act as panelist. On December 12, 2000, M. Scott Donahey accepted the position and filed the necessary Declaration of Independence and Impartiality. On December 12, 2000, the parties were notified that M. Scott Donahey had been appointed and that a decision was to be handed down on December 26, 2000. In light of the holiday season, the time for a decision was extended until December 29, 2000.
3. Factual Background
Complainant is the holder of numerous marks for CISCO and CISCO SYSTEMS for use in relation to computer hardware and software for interconnecting, managing, and operating local and wide area networks. The earliest of these trademarks issued in June 1989, showing a first use in commerce date of December 27, 1984. Complaint, Annex 1. Respondent registered the domain names at issue on December 20, 1999. Complaint, Annexes 3 and 4. The domain name cisco-online.com resolves to a web site identified as "Cisco Online Sales," which features photographs of many of Complainant's products, together with its famous CISCO SYSTEMS trademark above a stylized bridge. Complaint, Annex 2. This has been the exclusive contact of the web site to which the domain name resolves since at least April of 2000.
Complainant has not licensed or otherwise authorized Respondent to use any of its trademarks or to act as an agent, distributor, or reseller of Complainant. On April 11, 2000, counsel for Complainant sent Respondent a certified letter and email in which Complainant alleged that Respondent's use of Complainant's trademark created a likelihood of confusion and demanded that Respondent cease and desist from such conduct. In response thereto, Respondent sent a letter in which Respondent claimed to be or to be associated with an authorized reseller of Respondent. In response, Counsel for Complainant sent Respondent an email in which Respondent was informed that he had no right to use Complainant's trademarks, and again demanding that Respondent cease and desist from such activity. Complaint, Annex 5.
4. Parties' Contentions
Complainant contends that the domain names at issue are confusingly similar to marks in which Complainant has rights, that Respondent has no right or legitimate interest in respect of such domain names, and that Respondent has registered and is using the domain names in bad faith.
Respondent has not filed any Response to the allegations in the Complaint.
5. Discussion and Findings
Paragraph 15(a) of the 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 legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
Prior Panel decisions have found that neither the addition of hyphens in a domain name or the addition of the word "online" to the mark in a domain name will preclude a finding of substantial similarity. Creo Products Inc & anor v. Website in Development, ICANN Case No. D2000-0160; Easyjet Airline Company Limited v. Stephen B. Harding, ICANN Case No. D2000-0398; Royal Bank of Canada v. D3M Domain Sales, ICANN Case No. AF-0147; Gorstrew Limited, Jamaica and UniqueVacations, Inc. v. Zelby ICANN Case No. FA94931. This Panel believes those decisions were rightly decided and finds that the domain name at issue is confusingly similar to the marks in which Complainant has rights.
Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, ICANN Case No. D2000-007; Ronson plc v. Unimetal Sanayai ve Tic.A.S., ICANN Case No. D2000-0011; Document Technologies, Inc. v. International Electronic Communications, Inc., ICANN Case No. D2000-0270. In addition, the Panel has been unable to independently discern any legitimate interest in respect of the domain names at issue.
Respondent registered what respondent admittedly knew to be a famous mark, with minor additions, as domain names. Respondent claimed to be or to be affiliated with a reseller of Complainant's products. Complainant notified Respondent that Complainant's resellers had no right to use or display Complainant's trademarks. Respondent used one of the two domain names at issue (which differed from each other only by their gTLD suffix) to resolve to a web site at which photographs of Complainant's products were displayed and which displayed Complainant's trademarks, including its famous CISCO SYSTEMS trademark with the stylized bridge. The registration of a domain name which is confusingly similar to a famous mark has been found to b be bad faith registration. Zwack Unicum Rt. V. Erica J. Duna, ICANN Case No. D2000-0037. Moreover, prior panel decisions have found that where an authorized reseller of products of a complainant has registered as a domain name and used on a web site to which the domain name resolves, the trademarks of the complainant without any authorization from the complainant, this constitutes bad faith use of the domain name. Accordingly, the Panel finds that Respondent has registered and is using the domain name cisco-online.com in bad faith and has registered the domain name cisco-online.net in bad faith.
Finally, the list of circumstances included in Para. 4(b) of the Policy is not exhaustive. Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003. Where, as here, Respondent has registered two identical SLDs in two different gTLDs, has used one of the two to resolve to a web site which displays Complainant's trademarks and photographs of Complainant's products, then the holding of the other domain name also constitutes bad faith use.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are confusingly similar to the marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent's domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names cisco-online.com and cisco-online.net be transferred to the Complainant.
Dated: December 29, 2000
Palo Alto, California
(s) Scott Donahey