DECISION

TigerDirect.com v. Vcast, Inc.

Claim Number:  FA0311000214418

PARTIES

Complainant is TigerDirect.com (“Complainant”), 7795 W. Flagler Street, Suite 35, Miami, FL 33144.  Respondent is Vcast, Inc. (“Respondent”), 21/F, 83 Wanchai Road, Wanchai, Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <tiger.com> registered with Network Solutions, Inc.

PANEL

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.

Hon. Charles A. Kuechenmeister (Ret.) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 24, 2003; the Forum received a hard copy of the Complaint on December 3, 2003.

On December 3, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <tiger.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 December 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 29, 2003 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@tiger.com by e-mail.

An electronic copy of the Response was received on December 29, 2003. However, a hard copy was not received; therefore, the Forum does not consider the Response to be in compliance with paragraph 5(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).

On January 8, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Charles A. Kuechenmeister (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.      Complainant

The Complainant is a subsidiary of Systemax Inc.  Systemax Inc. is the owner of U.S. Trademark Registration No. 2526739 for the mark TIGER, showing a date of first use and first use in commerce of October 20, 1987, for mail order catalog services featuring computers and computer-related products; and retail store services featuring computers and computer‑related products.

Complainant is a direct marketer of brand name and private label product, including personal desktop computers, notebook computers, computer-related products and industrial products in North America and Europe.  One of the primary vehicles TigerDirect uses to sell merchandise is its website, http://www.TigerDirect.com, which allows consumers to purchase products over the internet.

"Tiger" is the common reference for "TigerDirect," "TigerDirect.com," "TigerSystems," "Tiger Software," "Tiger PC's," and "Tiger TV."

Respondent's domain name <tiger.com> creates a likelihood of confusion with Complainant's TIGER mark.

Respondent registered and is using <tiger.com> in bad faith, to divert internet traffic intended for Complainant's website.  The information provided on the site located at http://www.tiger.com/eng/index.htm is two years old.  This indicates that the use of <tiger.com> by Respondent is for sheer abuse of the confusion between <tiger.com> and TigerDirect.com.  Respondent is not actively pursuing reasonable efforts required to maintain a viable e-commerce site promoting its products under <tiger.com>.

The company "Alexa" monitors millions of internet users for their surfing habits.  Its report indicates that web surfers looking for TigerDirect.com are visiting <tiger.com> in significant numbers as well.

The website at <tiger.com> resolves to the web server of Vcast.net.  <Tiger.com> accounts for eighty percent of the traffic to that web server, as reported by Alexa.

Respondent has no publicly available record of trademarks or other claims on the term "TIGER" as used in <tiger.com>.

By using <tiger.com>, the Respondent has intentionally attempted to attract for commercial gain, internet users to Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's TIGER mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location of a product or service on the Respondent's website or location.

B.      Respondent

Respondent is a leading provider of multimedia and communication solutions with a prominent market share in the government and education market in Hong Kong and China.  Vcast's client's include Radio Television of Hong Kong, the Housing Authority, Hospital Authority, ITSD, Central Cyber Government Office (CCGO), and others.

Respondent was founded and is owned by Tiger Lie, now known as "Keith Lie."  Mr. Lie's Hong Kong identification name is Lie Kin Fu Tiger.  He was or is the founder and owner of the well-known Tiger BBS, Tiger Information Systems Limited (previously known as Tiger Information System Co.), an honorary member of the Association of Online Professionals, Vice Chairman of the Hong Kong Amateur Computer Association, a committee member of International Webcasting Association, senior advisor of several Hong Kong government projects, consultant for Hong Kong Youth Village Project, etc.  Mr. Tiger Lie has been interviewed by radios, newspapers, magazines for his expertise in multimedia and communications.

Tiger BBS was founded in 1989 and was the first BBS called "Tiger" before the internet was introduced for public use in Hong Kong.  Tiger BBS was named as top three by the regional magazine (Dataphile) and newspaper (SCMP).  Later, Tiger Lie founded a company called Tiger Computer Technology Company for providing BBS services, distributors of BBS software and modem terminals.

When the first ISP became available in Hong Kong, Tiger Lie was the first one to register the domain name <tiger.com>.  In 1994, Tiger Computer Technology Co. reorganized as Tiger Information System Co. and was appointed as distributor for numerous brands of modems.

Tiger Information System Co. does not offer online payment ordering, and most of its clients are channel resellers, enterprises, government or education entities with accounts opened with Tiger Information System Co.  Tiger Information System Co. has a very different market focus.  Respondent has no interest in the consumer market, in which Complainant operates.  This, together with the Respondent's own reputation make clear that there is no confusion as to business association with TigerDirect.com.

<Tiger.com> and <Tiger.com.hk> have been registered since early 1990 and 1994, respectively.

It is true that <tiger.com> has attracted internet users seeking Complainant's website, but Respondent has spent many man hours and resources to redirect those users to Complainant's website and has informed them that they have reached the Respondent's website by mistake.  Much of this misdirected traffic consists of annoying complaints or technical support requests.  Some of them have even claimed that they have been referred to Respondent's e‑mail address by the Complainant's technical support personnel.

Tiger is a common name and many brands, business or persons may use or be called "Tiger."

FINDINGS AND DISCUSSION

An electronic copy of the Response was received within the time provided by the Rules, but a hard copy was not received.  The Forum does not consider the Response to be in compliance with paragraph 5(b) of the Rules.  Nevertheless, the Panel elects to consider the Response.  It does not make reference to any attachments not available to the Complainant or the Panel because of the lack of hard copy.  The electronic copy is perfectly legible and can easily be read and understood.  There appears to be no prejudice or harm inuring to the Complainant or to this administrative proceeding on account of the omission of the hard copy.  Refusing to consider the Response filed electronically would, under these circumstances, amount to a manifest injustice and would advance no public purpose or policy of either the Rules or the Policy.  See Strum v. Nordic Net Exchange A.B., FA 102843 (Nat. Arb. Forum Feb. 21, 2002) ("Ruling a response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principals of due process.")

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 or Confusingly Similar  Policy ¶ 4(a)(i).

Complainant has produced evidence of Systemax Inc.’s trademark registration with the United States Patent and Trademark Office (“USPTO”) for the TIGER mark (Reg. No. 2,526,739 registered on January 8, 2002) in relation to mail order catalog services and retail store services featuring computers and computer-related products.  Complainant is a subsidiary of Systemax Inc.  This demonstrates Complainant’s rights in the TIGER mark under Policy ¶ 4(a)(i). See 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.  Respondent has the burden of refuting this assumption); see also 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”).

Respondent’s <tiger.com> domain name is identical to Complainant’s TIGER mark for purposes of Policy ¶ 4(a)(i) because the addition of a top-level domain is of no consequence to the analysis under the Policy.  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 Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp. 1331, 1335 (D.Or. 1997) (<epix.com> "is the same mark" as EPIX).

Based upon the foregoing, the Panel finds and determines that <tiger.com> is identical or confusingly similar to the mark TIGER, in which Complainant has rights.

Rights or Legitimate Interests  Policy ¶ 4(a)(ii).

Respondent was founded and is owned by Mr. Tiger Lie, who was the founder and owner of a well known online bulletin board system, Tiger Information Systems Limited.  Respondent has demonstrated rights to and legitimate interests in the <tiger.com> domain name because it represents Respondent’s company name.  See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent has rights and a legitimate interest in the domain name since the domain name reflects Respondent’s company name); see also World Publ’ns, Inc. v. World Pen, Seattle Pen, Inc., D2000-0736 (WIPO Sept. 14, 2000) (finding that as Respondent registered the trade name "WORLD PEN" in July 1996 and had been conducting business under that name since that date, it had rights or legitimate interests in the disputed domain name).

Respondent has established rights to and legitimate interests in the disputed domain name in that its domain name registration predates Complainant’s trademark registration.  See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because Respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by Complainant); see also Warm Things, Inc., Inc. v. Weiss, D2002-0085 (WIPO April 18, 2002) (finding that Respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before Complainant had established rights in its alleged mark).

From these circumstances it appears that Respondent has been using <tiger.com> and the name “Tiger” in connection with bona fide offerings of goods and services since well before it learned of this dispute, and has been commonly known by that domain name, even if it does not have any trade or service marks incorporating the name “Tiger,” all within the meaning of Policy ¶4(c)(i) and (ii).

Based upon the foregoing, the Panel finds and determines that Complainant has failed to demonstrate that the Respondent has no rights or legitimate interest in respect of <tiger.com>.

Registration and Use in Bad Faith  Policy ¶ 4(a)(iii).

The term “tiger” is a common name and many brands, businesses or persons use the term, such as Tiger Electronics, Tiger Toys and Tiger Woods.  The term “tiger” is thus generic.  See CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”); see also Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first‑served' basis").

The Respondent’s use of the <tiger.com> domain name was not in bad faith because Respondent has been offering legitimate services under the disputed domain name since 1994.  See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where Respondent has an active website that has been in use for two years and where there was no intent to cause confusion with Complainant’s website and business); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).

Based upon the foregoing, the Panel finds and determines that Complainant has failed to demonstrate that the Respondent registered and is using <tiger.com> in bad faith.

DECISION

Based upon the foregoing findings and discussion, the relief sought in the Complaint is denied.

Honorable Charles A. Kuechenmeister (Ret.)

Dated:  January 19, 2004