DECISION

PSC Management, Limited Partnership v. Sunmeet, Jolly

Claim Number: FA0401000230475

PARTIES

Complainant is PSC Management, Limited Partnership, PLANO, TX (“Complainant”) represented by J. Pat Hetig, of Jenkins & Gilcrist, 1445 Ross Ave., Suite 3200, Dallas, Texas 75202. Respondent is Sunmeet Jolly, 707 Continental Circle Apt. 1129, Mountain View, CA 94040 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <perotsystemsindia.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

R. Glen Ayers served as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 22, 2004; the Forum received a hard copy of the Complaint on January 23, 2004.

On January 22, 2004, Go daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <perotsystemsindia.com> is registered with Go-Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 January 27, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 16, 2004 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@ operotsystemsindia.com by e-mail.

A timely Response was received and determined to be complete on January 27, 2004. 

Complainant filed a timely and complete Additional Submission on February 1, 2004. 

Respondent also filed a timely and complete Additional Submission on February 6, 2004.

On February 24, 2004, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed R. Glen Ayers as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that Respondent, Sunmeet Jolly, has registered a domain name,<perotsystemsindia.com>, which Complainant asserts is identical to or confusingly similar to trademarks registered to Complainant in the United States including PEROT SYSTEMS as two words, PEROTSYSTEMS as one word, PEROTSYSTEMS.COM, and PEROT.COM, all of which are registered trademarks in the United States.

In addition, PEROT SYSTEMS two words, and PEROTSYSTEMS, one word, are registered in the country of India.  Complainant has offered evidence of the registration of these trademarks in the United States and evidence that registration is pending in India.

“Perot Systems” also operates in India in a joint venture with a company called HCL Technologies.  On December 20, 2003, “Perot Systems” issued a press release concerning the new Indian operations.  Nine days later, Complainant alleges, Sunmeet Jolly registered the domain name <perotsystemsindia.com>.  Evidence has been submitted of that registration.

“Perot Systems” argues, obviously, that Respondent has no rights or legitimate interests in the domain name.  Evidence has been offered that “Respondent has not implemented a bona fide or ‘active’ website for any goods or services using the Domain name.”

Apparently the domain name resolves to a “holding” website.

Further, Respondent has not used the domain name to market any goods or services.

Even though the website does not compete with the Complainant, Complainant argues that the mere diversion of Internet users is enough to constitute harm.  Complainant cites AT&T Corp. v. Hemani, D2003-0634 (WIPO Oct. 25, 2003).  Complainant also cites Perotsystems Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 9, 2000).

In addition, Complainant asserts that Respondent had actual constructive notice of the marks.  Complainant urges the Panelist to draw an inference between the announcement made by Complainant of its new Indian joint venture and the registration of the domain name a mere nine days later by Respondent.

Finally, bad faith is alleged by the use of the entirety of the PEROTSYSTEMS marks with the mere addition of the country name of India.  Complainant asserts that this reflects an intent to cause confusion and to profit from the illegal or improper registration.

B. Respondent

Respondent has replied by first alleging that it had no intent to misdirect traffic.  It asserts that the domain name is not deceptively similar to PEROT.COM.

Respondent also asserts a legitimate business interest.  He asserts that he has “an intention to build a future website for a potential business that will in no way interfere with the Perot’s interests.”

As to bad faith, Respondent denies that he knew that Complainant intended to enter India. He asserts that Complainant could select any number of names for any domain name related to India.

Finally, Respondent asserts that he is the legal owner of the domain name and that he has invested time and money in the creation of the domain name.  He asserts that transfer of the domain name “will cost me not only my investment but also a lot of distress and frustration on losing a potential future business idea.”

C. Additional Submissions

Complainant filed an additional submission noting that bad faith was demonstrated by knowingly copying the entirety of a famous mark.  Complainant cites eBay, Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001). That case and others certainly hold that bad faith may be inferred where the entirety of a mark is copied and captured by the registration of a domain name. Complainant asserts that Respondent’s arguments do “not give Mr. Jolly the right to steal the famous Perot Marks for his own gain, even if other companies do not police their marks.”

FINDINGS

Certainly the domain name and the marks are confusingly similar.  The addition of the name “India” certainly does not make the mark and domain any less confusingly similar.  See eBay, Inc. v. Hong, D2000-1633 (WIPO), which involved the disputed name <ebaykorea.com>.  Having established the confusingly similar nature of the domain names, it appears very clearly that Respondent has failed to show that it had any interest in the name.  Respondent’s name is not “Perot,” or “Systems” or “Management” or “India.”  Respondent was not engaged in a business name “Perotsystems India” before the registration of the marks. “Perotsystems India” does not refer to Respondent.  Therefore Respondent has no interest in the names, and could not, under the domain name standards, having never done any business under the domain name.  Respondent does not indicate that it has any interest in the domain name except by the very act of registration, which is the act complained of.

That leaves the question of bad faith.  Ordinarily bad faith is determined by the attempt to use a domain name, which is confusingly similar to a mark, to essentially cyber squat on the domain name.  As pointed out by Complainant, a number of cases have held that evidence of the use of an entire mark as a domain name is sufficient to find bad faith by inference.  The cases cited by Complainant are persuasive.  See eBay, Inc. v. Hong, D2000-1633 (WIPO); see also Cellular One Group v. LeBryant, D2000-0028 (WIPO Mar. 10, 2000); see also Perotsys.corp v. Hall, FA9531 (Nat. Arb. Forum Aug. 29, 2000).  Mr. Jolly’s arguments notwithstanding, the fact that the Perot organization may have available other domain names is irrelevant when the domain name registered by Mr. Jolly is identical to or confusingly similar a registered mark.  See Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (holding at a mark owner need not create “libraries” of domain names in order to protect themselves).

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

The domain name and mark are identical or confusingly similar.

Rights or Legitimate Interests

The Respondent has no rights in the name nor does he have legitimate interests in the name.

Registration and Use in Bad Faith

Respondent registered the name in “bad faith.”

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <perotsystemsindia.com> domain name be TRANSFERRED from Respondent to Complainant.

R. GLEN AYERS, Panelist

Dated: 

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