1. Parties and Contested Domain Name
Complainant: Geckodrive Inc.
Respondent: Jon Hollcraft
Contested Domain Name: geckodrives.com
2. Procedural History
The electronic version of the Complaint form was filed on-line through eResolution's Website on October 1, 2001. The hardcopy of the Complaint Form and annexes were received on October 8, 2001. Payment was received on October 2, 2001.
An email was sent to the Registrar by eResolution Clerk's Office to obtain confirmation and a copy of the Registration Agreement on October 11, 2001. The requested information was received October 12, 2001.
The Clerk then proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN's Rules for Uniform Domain Name Dispute Resolution Policy. The Clerk's Office forwarded the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on October 12, 2001.
The complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent. According to the Canada Post tracking system, all were delivered.
On November 1, 2001, the Respondent submitted, via eResolution Internet site, his response. The signed version of the response was received on November 5, 2001.
On November 6, 2001, the Clerk's Office contacted Stephen Meltzer, and requested that he acts as panelist in this case.
On November 7, 2001, Stephen Meltzer accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.
On November 7, 2001, the Clerk's Office forwarded a user name and a password to Stephen Meltzer, allowing him to access the Complaint Form, the Response Form, and the evidence through eResolution's Automated Docket Management System.
On November 7, 2001, the parties were notified that Stephen Meltzer had been appointed and that a decision was to be, save exceptional circumstances, handed down on November 21, 2001.
3. Factual Background
(1) The Complainant, Gecko Drive, Inc., is a California corporation, located at 9702 Rangeview Drive, Santa Ana, California is in the business of manufacturing and selling motion control and electronic motor drives.
(2) The Respondent, Jon Holcraft, an individual, located in Laytonville, California, is in the business of reselling motion control and electronic motor drives.
(3) The domain name "Geckodrive.com" is registered to the complainant and was first registered on September 22, 1999.
(4) On or about September 22, 2001, a Janice Freimanis, filed an "Intent to Use" application with the United States Patent and Trademark Office for the registration of the word mark
(5) The Complainant has used the mark "GECKODRIVE" in commerce since at least January 1, 2000.
(6) The Respondent has resold the Complainant's products for at least eighteen months and has done so through internet marketing and order fulfillment.
(7) The domain name "Geckodrives.com" is registered to the Respondent and was first registered on June 12, 2000.
(8) The Respondent registered the domain name "Geckodrives.com" for the purpose of reselling the Complainant's products for a commission.
(9) The Respondent has made a significant financial investment in the marketing and technical development of the website accessed through "Geckodrives.com".
(10) The reseller relationship between the Respondent and the Complainant has deteriorated and the Respondent is no longer authorized to resell the Complainant's products.
(11) The Complainant never authorized the Respondent to use the name "GECKODRIVE" except insofar as it authorized and was aware of resale of its product by the Respondent.
(12) The Respondent has started marketing products under a trade name "Dolphindrives", has registered a domain name "Dolphindrives.com" and redirects all traffic from "Geckodrives.com" to "Dolphindrives.com".
(13) The Respondent intends to sell the Complainant's products on his website.
(14) The Complainant has changed its marketing strategy to distribute its product through manufacturers representative rather than through resellers.
(15) The Respondent has requested financial consideration for the transfer of the domain name registration.
(16) The Complainant plans to expand its product line into related products.
(17) The Complainant's potential customers have accessed the Respondent's website inadvertently while trying to access the Complainant's website.
4. Parties' Contentions
The Complainant contends that the Respondent has registered a mark that is confusingly similar in that he merely pluralized the Complainant's registered domain and registered trademark. The Complainant further contends that the mark is illegitimate by virtue of its superior trademark rights, its primacy in registering the domain name, and by virtue of the fact that the Respondent is not officially associated with it, is no longer authorized to sell its products and has no authority to use the trademark "Geckodrive." The Complainant alleges that the Respondent is deceptively confusing and diverting potential customers from its web site to his own, selling incompatible products to its potential customers, is causing injury to its reputation by his unresponsiveness and abusiveness to potential customers, and that the Respondent has refused to transfer the domain name without payment of $350,000.
The Complainant requests transfer of the registration to the Complainant.
In his defense, the Respondent disclaims similarity in that his registration includes the letter "s" at the end. The Respondent also various claims that by virtue of a long-standing business relationship with the Complainant, he either has a right to use the name, or that the Complainant has been enriched by his use of the
name.2 The Respondent also disputes that he has acted in any way which would be injurious of the Complainant's reputation. The Respondent also contends that he never requested $350,000 for the transfer of the registration but that that number was a "conservative valuation of sales including ramp-up, for seven year amortization of goodwill valuation, and how the hundreds of hours of time I have put into developing the geckodrives.com domain might be assessed."
5. Discussion and Findings
Under Paragraph 4 (a) of the ICANN Uniform Domain Name Dispute Resolution Policy, in order to succeed in this proceeding, the Complainant must provide sufficient evidence to this tribunal of the following elements:
"(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith."
A. Identical or Confusingly Similar
The domain name is not identical, but is nearly so. In order to assess whether it is confusingly similar, I will rely upon the factors articulated by the Ninth Circuit Court of Appeals. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979) :
(1) strength of the mark;
(2) proximity or relatedness of the goods;
(3) similarity in appearance, sound, and meaning of the marks;
(4) evidence of actual confusion;
(5) degree to which the marketing channels converge;
(6) type of good and degree of care customers are likely to exercise in purchasing them;
(7) evidence of the intention of defendant in selecting and using the alleged infringing name; and
(8) likelihood that the parties will expand their product lines.
There has been no competent evidence presented, and therefore no factual finding regarding the strength of the mark, nor the degree of care customers are likely to use. There are, however, conclusive findings regarding each of the other factors. The goods are identical, the mark appears and sounds the same, there has been actual confusion, the marketing channels are identical, the Respondent chose the name in order to sell the Complainant's goods to the Complainant's customers, and lastly, the Complainant intends to expand its product lines.
Next, it must be determined that the Complainant has rights in the trademark or servicemark. Notwithstanding and without regard to the application for a Federal Registration the Complainant has made the uncontested assertion that it has used the mark "GECKODRIVE" in commerce since at least January 1, 2000. The Respondent's evidence only contends use since registering the domain name in June of 2000, or, at the very earliest, eighteen months ago, and then only to sell the Complainant's product. As superior trademark rigths are acquired by first use in commerce, the Complainant has sufficient rights in the mark
Accordingly, and in accordance with common sense regarding the similarity of the names, I find that the Complainant has satisfied its burden with respect to the first element of its claim.
B. Respondent's Rights or Legitimate Interests in Respect to the Name
The Respondent's only rights to and interests in the name "GECKODRIVE" and "Geckodrives.com" is as they relate to the resale of the Complainant's products. Any such rights, if they ever existed, have been clearly and unequivocably revoked and rescinded by the Complainant. The Respondent has asserted no independent right to use the name, other than by virtue of his relationship with the Complainant. The relationship has terminated, as have any legitimate interests that the Respondent may have had to the name.
Accordingly, the Complainant has satisfied its burden with respect to the second element of its
C. Bad Faith
More difficult in this circumstance, as in many, is a determination of whether there is bad faith. It is clear, and I credit the evidence, that benefit enured to the Complainant through the Respondent's efforts. It is also clear that the Respondent's actions were originally motivated by a good faith effort to become a successful reseller of the Complainant's products. While the ICANN Uniform Domain Name Dispute Resolution Policy states in the conjunctive that the domain name "has been registered and is being used in bad faith," see Paragraph 4 (a) (iii), the codified examples of bad faith are alternative and include the following in Paragraph 4 (b) (iv) :
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The respondent's intentions in continued use of the domain name, despite his original motivations, are precisely so. The Respondent wishes to retain the domain name in order to either sell the Complainant's products in contravention of the Complainant's strategy to sell only through manufacturer's representatives, or to sell competing products on its own web site.
Moreover, the Respondent's discussion of renumeration in exchange for tranfer, while he did not acquire the domain name for such a purpose,is evidence of a bad-faith attempt to retain a domain name to which he otherwise has no legitimate claim.
Accordingly, the Complainant has satisfied its burden with respect to the third and final element of its claim
The Complainant has made out all of the elements of paragraph 4 (a) of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4 (i) of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.
I hereby order that the domain name "Geckodrives.com" be transferred forthwith to the
(s) Stephen E. Meltzer
Concord, Massachusetts USA
November 20, 2001
1 Throughout the remainder of this decision, the Complainant's representative, Mariss Freimanis, and Janice J. Freimanis, will be collectively referred to as the Complainant. While they are separate legal entities, the distinction is not relevant to this determination except as noted in Footnote 3 hereof.
2 The Respondent also disputes the identity of the parties, claiming that there is no corporation registered in California as alleged by the Complainant and as found in the Complainant's application to the United States Patent and Trademark Office.
3 The Complainant's trademark rights are assessed in this determination. In order to determine if the Federal Registration enhances its trademark rights, the Complainant (Gecko Drive, Inc.) would need to supply evidence to the Tribunal that the Applicant for the Federal Trademark Registration (Janice Freimanis) has licensed or otherwise transferred those rights to the Complainant. As the Complainant has established its rights to the mark without regard to the Federal Registration, however, such evidence is not here determinative or necessary.