DECISION

Gavagai Technology Incorporated v. Gavagai

Claim Number: FA0212000135611

PARTIES

Complainant is Gavagai Technology Incorporated, Burnaby, BC, CANADA ("Complainant") represented by Paul Armitage, of Frasken Martineau DuMoulin LLP. Respondent is Gavagai, Upper Marlboro, MD, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <gavagai.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.

Rodney C. Kyle as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 4, 2002; the Forum received a hard copy of the Complaint on December 4, 2002.

On December 6, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <gavagai.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 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 30, 2002 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@gavagai.com by e-mail.

A timely Response was received and determined to be complete on December 30, 2002.

On January 15, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Rodney C. Kyle as Panelist.

On January 29, 2003, the Panel extended the due date for its decision to February 3, 2003.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

In the Complaint, Complainant basically makes four main contentions listed herein as "(1)", "(2)", "(3)", and "(4)". They are

(1) especially in Complaint paragraphs 5-19 to 5-22, that the domain name at issue is registered by Respondent and is identical or confusingly similar to a trademark or service mark in which Complainant has rights and, more particularly,

(a) in paragraph 5-3, that the word "gavagai" was coined by the linguistic philosopher

W. V. Quine (1908-2000) and appears in his book Word and Object (MIT Press, 1960) where it is used as part of his argument for what he referred to as the "indeterminacy of translation" which holds that there can never be a 100% correct translation of a word,

(b) in paragraph 5-1, that Complainant is a company that was incorporated under the

laws of the Province of British Columbia, Canada, on June 3, 1999,

using Saegis to determine whether any other business was using the word "Gavagai" and Complainant also conducted on-line WHOIS searches at Network Solutions, Inc., and Complainant’s searches did not identify any other commercial or non-commercial uses of "Gavagai" either by Respondent or by anyone else,

(d) in paragraphs 5-2, 5-3, and 5-20, that Complainant

(i) develops and commercializes XML-based content-management software

aimed at improving how computers "understand" and process human languages,

(ii) provides consulting services in connection with its software,

(iii) chose the word "gavagai" as part of its corporation name (i.e. "Gavagai Technology Incorporated") in view of the software aim referred to in contention "(1)(d)(i)" of this list and in view of contention "(1)(a)" of this list, and

(iv) has been doing or carrying on business in the US and Canada under said corporation name since 1999 or, more specifically (as to date but unspecifically as to location), June 1999,

(e) in paragraph 5-5, that on August 6, 1999 Complainant was informed by a registry

agent (which Complainant had been using to investigate the availability of "Gavagai" as a domain name) that the domain name at issue had been registered by Respondent on August 5, 1999,

(f) in paragraphs 5-8 and 5-20, that on April 21, 2000 Complainant filed with the

United States Patent and Trademark Office an application for registration of

GAVAGAI as a service mark, claiming a first use in 1999, and that the application was granted on March 5, 2002,

(g) in paragraph 4-c, that Complainant has United States Trademark Office

registration, having application serial number 76032112, for said service mark in International Class 042 and US Classes 100 and 101 for use in association with computer services, namely, providing Internet and intranet search engines for obtaining information from computer networks, and, in International Class 035 and US Classes 100, 101, and 102, for use in association with electronic document management for others, namely, document retrieval document categorization and document classification,

(h) in paragraph 5-6, that on August 6, 1999, Complainant registered the domain

name <gavagai.net> with Network Solutions, Inc.,

(i) in paragraph 5-7, that Complainant maintains its web site which resolves through

<gavagai.net> and that Complainant has the registration of or entitlement to use each of the following domain names through which Complainant’s web site also resolves: <gavagai.ca>, <gavagai.technology.com>, and <gavagai.technologies.com>, and

(j) in paragraphs

(i) 5-19, that when considering whether a domain name is identical or

confusingly similar to a complainant’s trademark or service mark, the ".com" element of the domain name is ignored,

(ii) 5-18 and 5-21, that Policy paragraph 4(a)(i), referred to in paragraph 5-18 as being set out in Complaint Exhibit 15, is satisfied in that either or both of the following are true:

(A) the domain name at issue is identical to Complainant’s service mark GAVAGAI and

(B) the domain name at issue has the exact same spelling as the opening word of Complainant’s corporation name, and

(iii) 5-22, that Respondent’s registration of <gavagai.com> is confusing to

Complainant’s customers and to those searching the World Wide Web for Complainant since a likely search strategy for many users when searching for Complainant’s business would be to search under the domain name at issue and since such searchers will reach an inactive web site (as contended in contentions "(2)(b)" and "(2)(c)" of this list) and not Complainant’s web site;

(2) especially in Complaint paragraphs 5-23 to 5-29, that Respondent has no rights or legitimate interests in respect of the domain name at issue and, more particularly,

(a) in paragraph 5-9, that Respondent is not affiliated and has no connection with

Complainant and is not licensed by Complainant to use said service mark,

(b) in paragraphs 5-10 and 5-23, that

(i) for approximately a year after registering it, the domain name resolved to a single page showing a graphic and a notice to the effect that the site was to be a site for art and literature,

(ii) no substantive content was ever added to the site,

(iii) since approximately August, 2000 [Note from the Panel: "2002" in Complaint paragraph 23 is so inconsistent with the rest of the Complaint that it must have been a typographical error for "2000"], Respondent has had via the domain name either simply an Apache server start page or no presence at all, and

(iv) "(i)", "(ii)", and "(iii)" of this contention "(2)(b)" indicate that Respondent has made no real use of the domain at issue,

over two years ago and

(i) from approximately August, 1999 to August, 2000, Respondent simply posted a single page suggesting that a more substantive site would follow, but no more substantive site was ever posted by Respondent,

(ii) since approximately August, 2000, Respondent has simply posted (at the site that resolves through that domain name) said Apache server start page or else has had no presence via the domain name at all,

(iii) Respondent has once renewed the registration, on or about August 6, 2001, and

(iv) "(i)", "(ii)", and "(iii)" of this contention "(2)(c)" indicate that Respondent has since then been passively holding it,

(d) in paragraph 5-25, that passive holding of a domain name is not a legitimate non-

commercial use under the Policy,

(e) in paragraphs 5-13, 5-14, and 5-26, that on September 5, 2002 Complainant

attempted to contact Respondent by courier letter (sent to Respondent’s contact information supplied by Respondent in connection with its domain name registration) together with a hard copy of an unsuccessfully transmitted e-mail Complainant had sent to Respondent earlier that day (sent to the e-mail address <rubyflux@erols.com> shown on its directNIC WHOIS registration information, the unsuccessfulness being indicated by the message-back to Complainant of "Unknown local part in rubyflux in rubyflux@erols.com" and being confirmed by an identical e-mail sent by Complainant on September 10, 2002 resulting in the same message-back) and, although the letter was delivered to Respondent on September 10, 2002, Respondent has failed to respond thereto,

(f) in paragraph 5-26, that a non-response of the sort contended in contention "(2)(e)"

of this list, coupled with contentions "(2)(c)" and "(2)(d)" of this list, is evidence that a respondent (and more particularly Respondent) lacks rights or a legitimate interest in the respective domain name,

(g) in paragraphs 5-17 and 5-27, that Respondent obtained two "trade name"

registrations for "Gavagai" in the State of Maryland, one on August 18, 1999 and the other on August 20, 1999, each showing the name Timothy Scott Hoelscher which name is the same name as the name of the contact person for the domain name at issue, but

(i) one of those two "trade name" registrations is now inactive and

(ii) Respondent makes no active use of <gavagai.com> in connection with either "trade name" registration,

(h) in paragraphs 5-1, 5-17, and 5-27, that Respondent does not appear to have registered any trademark or service mark with the United States Patent and Trademark Office for "Gavagai" and that instead

(i) Complainant has a wholly-owned subsidiary named Gavagai Technology (U.S.), Inc., which was incorporated under the laws of the State of Delaware on June 3, 2002,

(ii) an on-line search for "Gavagai" (for 45 US states as well as California individually, Delaware individually, and Maryland individually) in a database of corporate registrations only shows (in addition to the "trade name" registrations referred to in contention "(2)(g)" of this list) Complainant's Delaware subsidiary and Complainant’s California registration of that Delaware subsidiary and

(iii) an on-line search for "Gavagai" at the United States Patent and Trademark Office shows one result, namely Complainant’s service mark,

(i) in paragraph 5-28, that basically in view of contentions "(1)(a)" and "(1)(d)(i)" of this list the word "Gavagai" has no obvious connection to Respondent’s purported purpose for obtaining the domain name at issue, which was to create a site for art and literature,

(j) in paragraph 5-29, that if a respondent is a passive holder of a domain name at issue and if that respondent has no obvious connection with that domain name then that respondent has the burden of showing that it has a right or legitimate interest, and

(k) in paragraph 5-29, that basically in view of contentions "(2)(c)", "(2)(d)", "(2)(i)" and "(2)(j)" of this list Respondent has the burden of showing that it has a right or legitimate interest in respect of the domain name at issue;

(3) especially in Complaint paragraphs 5-30 to 5-34, that Respondent registered and is using the domain name at issue in bad faith and (building on facts established through the contentions set out in "(1)" and "(2)" of this list), more particularly,

(a) in paragraph 5-30, that passive holding of an infringing domain name constitutes bad faith under the Policy and similarly the fact that one of Respondent’s Maryland "trade name" registrations for "Gavagai" is inactive may be indicative of bad faith since it may reflect the fact that Respondent has no active business in connection with its registration of the domain name at issue,

(b) in paragraph 5-31, that the timing of Respondent’s registration of the domain name at issue may be evidence of bad faith, since the registration occurred just two months after the incorporation of Complainant and while Complainant was conducting WHOIS searches at domain name registries,

(c) respectively in paragraphs 5-12, 5-15, and 5-16, that Respondent's failure to respond to Complainant’s communications further include that

(i) Complainant’s President attempted to contact Respondent by phoning the phone number shown on Respondent’s directNIC WHOIS registration information, on September 4, 2002 (twice) and September 5, 2002 (twice) but on each occasion the phone rang without anyone or any answering machine answering it,

(ii) on September 5, 2002, Complainant requested a transfer to it of <gavagai.com> through directNIC but the request was rejected since it "timed out" without directNIC having received any response from Respondent, and

(iii) on November 2, 2002, Complainant’s Chief Operating Officer called a phone number obtained from an online phone directory for a "Timothy Hoelscher" (being the contact name for Respondent shown on its directNIC WHOIS registration information) of Bryans Road, Maryland (being the same address given for a "trade name" registration for "Gavagai" made by Timothy Hoelscher in the State of Maryland, as contended through contention "(2)(g)" of this list), and thereupon received a response from an answering machine and left a message at the answering machine asking Mr. Hoelscher to call Complainant regarding <gavagai.com> but Complainant did not receive any return call to that message,

(d) in paragraph 5-32, that failure by Respondent to respond to Complainant’s communications, as well as the fact that Respondent supplied, in connection with its registration of the domain name at issue, an email address <rubyflux@erols.com> that did not function when Complainant attempted to use it, may be indications of bad faith,

(e) in paragraph 5-33, that a determination of bad faith under the Policy is made from a consideration of all the circumstances, and

(f) in paragraph 5-34, that the circumstances of this case indicate that Respondent registered and is using the domain name at issue in bad faith, in that

(i) Respondent’s holding of said domain name has been passive,

(ii) one of Respondent’s Maryland trade registrations for "Gavagai" is inactive,

(iii) the timing of Respondent’s registration of the domain name may be indicative of bad faith,

(iv) Respondent has not responded to Complainant’s communications regarding the domain name, and

(v) Respondent has supplied an email address that did not function when Complainant attempted to use it; and

(4) especially

(a) in paragraph 5-1, that evidence that is rationally probative of contention "(1)(b)"

of this list is in a certificate of incorporation of Complainant contained in Complaint Exhibit 1,

(b) in paragraph 5-4, that evidence that is rationally probative of contention "(1)(c)"

of this list is in a Saegis trademark search report contained in Complaint Exhibit 2,

of this list is in a WHOIS search result contained in Complaint Exhibit 3,

(d) in paragraph 5-8, that evidence that is rationally probative of contention "(1)(f)"

of this list is in a certificate of registration of said mark contained in Complaint Exhibit 5,

(e) in paragraph 5-6, that evidence that is rationally probative of contention "(1)(h)"

of this list is in a WHOIS search result contained in Complaint Exhibit 4,

(f) in paragraph 5-19, that evidence that is rationally probative of contention

"(1)(j)(i)" of this list is in two panel decisions respectively contained in Complaint Exhibits 16 (Clerical Medical Investment Group Limited v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) at p. 3) and 17 (Europcar International SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) at p. 3),

(g) in paragraph 5-10, that evidence that is rationally probative of contention

"(2)(b)(iii)" of this list is in a copy of an Apache server start page posted at <gavagai.com> on September 5, 2002 (or May 9, 2002 since paragraph 5-10 and the Complaint Index of Exhibits are inconsistent on this point) and contained in Complaint Exhibit 6,

(h) in paragraph 5-25, that evidence that is rationally probative of contention "(2)(d)"

of this list is in two panel decisions respectively contained in Complaint Exhibits 18 (American Home Products Corporation v. Ben Malgioglio, D2000-1602 (WIPO Feb.19, 2001) at p. 10) and 19 (Jim Karas v. Jim Karashavaran, FA 124992 (Nat. Arb. Forum Nov. 4, 2002) at p. 4),

(i) in paragraph 5-13, that evidence that is rationally probative of the e-mail aspects

of contention "(2)(e)" of this list is in a copy of the e-mails of those dates contained in Complaint Exhibit 7,

(j) in paragraph 5-14, that evidence that is rationally probative of the couriered letter

aspects of contention "(2)(e)" of this list is in a copy of the letter of that date, and in a copy of the courier confirmation, contained in Complaint Exhibit 8,

(k) in paragraph 5-26, that evidence that is rationally probative of contention "(2)(f)"

of this list is in a panel decision contained in Complaint Exhibit 17 (Europcar International SA v. New Media Research in Romania SRL, Claim No. FA 123906 (Nat. Arb. Forum Nov. 4, 2002) at p. 4),

(l) in paragraph 5-17, that evidence that is rationally probative of contention "(2)(g)"

of this list is in a copy of a CT Corporation Corporate Charter database (of United States corporate registrations) on-line search result obtained November 25, 2002 for Maryland, contained in Complaint Exhibit 13,

(m) in paragraph 5-1, that evidence that is rationally probative of contention

"(2)(h)(i)" of this list is in an extract of a certificate of incorporation of said subsidiary, contained in Complaint Exhibit 1,

(n) in paragraph 5-17, that evidence that is rationally probative of contention

"(2)(h)(ii)" of this list is in respective copies of CT Corporation Corporate Charter database (of United States corporate registrations) on-line search results obtained November 25, 2002 for

(i) 45 US states, contained in Complaint Exhibit 10,

(ii) California, contained in Complaint Exhibit 11, and

(iii) Delaware, contained in Complaint Exhibit 12,

(o) in paragraph 5-17, that evidence that is rationally probative of contention

"(2)(h)(iii)" of this list is in a copy of a United States Patent and Trademark Office search result for "Gavagai." that is contained in Complaint Exhibit 14,

(p) in paragraph 5-29, that evidence that is rationally probative of contention "(2)(j)"

of this list is in a panel decision contained in Complaint Exhibit 16 (Clerical Medical Investment Group Limited v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) at p. 4),

(q) in paragraph 5-30, that evidence that is rationally probative of contention "(3)(a)"

of this list is in four panel decisions respectively contained in Complaint Exhibits 16 (Clerical Medical Investment Group Limited v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) at p. 4), 17 (Europcar International SA v. New Media Research in Romania SRL, Claim No. FA 123906 (Nat. Arb. Forum Nov. 4, 2002) at p. 5), 19 (Jim Karas v. Jim Karashavaran, FA 124992 (Nat. Arb. Forum Nov. 4, 2002) at p. 5), and 20 (Hewlett-Packard Company v. Greg Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) at p. 3),

(r) in paragraph 5-31, that evidence that is rationally probative of contention "(3)(b)"

of this list is in a panel decision contained in Complaint Exhibit 21 (Kencell Communications Ltd. v. Agosto Liko, CPR0101 (CPR Apr.11, 2001) at pp. 5-6),

(s) in paragraph 5-15, that evidence that is rationally probative of contention

"(3)(c)(ii)" of this list is in the copy of the directNIC transfer request report contained in Complaint Exhibit 9,

(t) in paragraph 5-32, that evidence that is rationally probative of contention "(3)(d)"

of this list is in a panel decision contained in Complaint Exhibit 16 (Clerical Medical Investment Group Limited v. Clericalmedical.com, Case No. D2000-1228 (WIPO Nov. 28, 2000) at p. 4), and

(u) in paragraph 5-33, that evidence that is rationally probative of contention "(3)(e)"

of this list is in two panel decisions respectively contained in Complaint Exhibits 21 (Kencell Communications Ltd. v. Agosto Liko, CPR0101 (Apr. 11, 2001) at p. 5) and 22 (Telstra Corp. v. Nuclear Marshmallows, No. D2000-0003 (WIPO Feb. 18, 2000) at p. 10).

B. Respondent

In the Response, Respondent basically makes two main contentions listed herein as "(1)" and "(2)". They are

(1) especially as to above-listed Complaint contention "(1)", that

(a) Complainant asserts that "gavagai" has a strong semantic association to the

software Complainant produces,

(b) despite contention "(1)(a)" of this list,

(i) Complainant assumes that Respondent’s use of "gavagai.com" will cause

significant confusion, and such assumption presupposes

(A) Complainant has a sufficient current or potential customer or user base to confuse and

(B) the purposes and intentions of Complainant and Respondent are similar enough to cause confusion,

(ii) as to contention "(1)(b)(i)(A)" of this list, that Respondent does not have

Complainant's current or projected business statistics at hand and so cannot address that contention except to contend that to the public at large, and to the content-management industry in particular, "gavagai" is not particularly well known, either as a word from Quine or as it applies to Complainant’s business name, and

(iii) as to contention "(1)(b)(i)(B)" of this list, that the contention is obviated by Complainant being a software producer and Respondent being a prospective artistic community (i.e. its domain name being for a web site which would serve content created by and for users of that site – the idea being that such a community would define itself and present a vision of the world and a picture of the human condition with a clearer focus and without the constraints imposed by many commercial web-based art repositories, an idea of precision of definition that is central to Quine’s concept of "gavagai") and that as a result there is no intersection between Complainant or Respondent in form, function, purpose or intention, and

Complainant contends to produce) in mind when Quine produced the word "gavagai"; and

(2) especially as to above-listed Complaint contentions "(2)" and "(3)”, that Respondent

registered the domain name at issue with intent to use it in good faith and that

(a) especially above-listed Complaint contentions "(2)(b)(iv)" and "(2)(c)(iv)" are

refuted by Respondent having made strong efforts to put forth a legitimate web presence and still having intentions of doing so, which efforts included

(i) registering "Gavagai" (in Maryland) as a fictitious name under which the company would operate,

(ii) obtaining a sales and use license for the selling of artwork and goods produced by the gavagai.com community – this sales and use license has now expired, but its original procurement does support the assertion that there was a good faith effort to use the site for commercial purposes unrelated to Complainant’s,

(iii) purchasing advertising in target (web-based) markets intended to solicit artistic contributions to the online community (gavagai.com),

(iv) opening a bank account with Chevy Chase Bank in the name "Gavagai" to handle financial transactions related to the site,

(v) registration of a Post Office box in Prince George’s County, Maryland, for the purpose of receiving submissions, and

(vi) purchasing business-class web hosting with Matrixcubed Web Hosting Services, suitable for producing a high-bandwidth site capable of distributing digital content (images and audio) to a large number of users,

(b) especially above-listed Complaint contention "(2)(f)" is refuted by Respondent's

contentions that Complainant is dissatisfied with Respondent’s schedule, that Complainant sets forth an implied schedule for Respondent to follow, and that instead Respondent

(i) registered the domain name at issue before Complainant,

(ii) maintained said registration and paid all fees required to do so,

(iii) has good faith intentions to use said domain for Respondent’s purposes, unbound by any schedule Complainant would like to impose, and

(iv) was unwilling to communicate with Complainant because of Complainant’s antagonistic tactics, and more particularly that

(A) soon after Complainant registered "gavagai.net" with Network Solutions, Respondent received an e-mail from Complainant containing only the text "why did you steal my domain name?",

(B) said initial email set a precedent of antagonism and harassment that has culminated in this proceeding,

(D) Respondent felt no need to discuss the situation further, since only one outcome would likely have been acceptable to Complainant, and

(E) Respondent did not communicate with Complainant because there was nothing to discuss,

of contention "(1)(b)(iii)" of this list, and

(d) Respondent's WHOIS record is out of date because, although Respondent

began remedying that in Oct. 2002, the process has been a long one because of Respondent's e-mail and address changes.

FINDINGS

The Panel's findings include the following:

(i) the domain name at issue, <gavagai.com>, is registered by Respondent and is identical to a service mark, GAVAGAI, registered in the United States Trademark Office as registration 2,544,129 and in which Complainant has rights, such that Policy paragraph 4(a)(i) is proven;

(ii) Respondent has no "rights or legitimate interests in respect of the domain name", within the meaning of that expression as it occurs in Policy paragraph 4(a)(ii); and

(iii) Complainant has failed to prove Respondent has registered and is using the domain name at issue in bad faith.

DISCUSSION

Introduction

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 and 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

In view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to ascertaining whether each of those three elements have been proven. First, that

Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. "real evidence"); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[1]

Second, especially as to mode "3", that Rule 10(d) provides that "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Third, as to construing and applying Rule 10(d), especially as to whether mode "1" rather than mode "3" applies: a complainant’s pleading of fact that is not disputed (or, phrased differently, not "put in issue") by a respondent against whom it is contended, is an admission by that respondent,[2] so evidence tendered as being rationally probative of (i.e. as being "relevant to") establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[3] Fourth, as to whether mode "2" rather than either of mode "1" or mode"3" applies, a canvassing of Anglo-American law and commentary shows that

It was not desirable, nor indeed possible, to foreclose the trier's use of background information but should the matter noticed be in the forefront of the controversy, should the fact be determinative, the law protected the adversary by insisting that the matter be so commonly known, and hence indisputable, that its notice could not prejudice the opponent.[4]

and that "The party who has the burden of proof on the issue may have to call on the trier to judicially notice the fact when it comes time to analyze the question."[5]

In setting out the lists of each party's contentions above (in the "Parties' Contentions" portion hereof) the Panel endeavored to use, to the extent possible, the same vocabulary (though not necessarily the same structure) used by the respective party. Hereinafter, the Panel is no longer subject to that constraint.

Identical or Confusingly Similar

The Panel has stated the above-listed Complaint contention "(1)(j)(ii)" in the way that it has, especially as a result of construing Complaint paragraph 21 in two respects. (The text of Complaint paragraph 21 is "The domain name <gavagai.com> registered by the Respondent is identical to the Complainant’s service mark GAVAGAI and has the exact same spelling as the opening word of the Complainant’s company name. It is therefore submitted that the first branch of the UDRP test is satisfied.") In one respect, Complaint paragraph 21 is a contention that, as a basic factual matter, each of above-listed Complaint contentions "(1)(j)(ii)(A)" and "(1)(j)(ii)(B)" are true; in that respect, the Panel construes the paragraph 21 occurrence of "and" as conjunctive, which, of course, is the presumptive meaning for "and". In another respect, paragraph 21 does not appear to the Panel to be a contention that, to satisfy Policy paragraph 4(a)(i), both of what are listed above as Complaint contentions "(1)(j)(ii)(A)" and "(1)(j)(ii)(B)" are required but instead appears to the Panel to be a contention that either of them suffices; in that respect, the Panel construes the paragraph 21 occurrence of "and" as disjunctive and does so especially on the basis that such a departure from the presumptive meaning of "and" is warranted by each of the sentences of Complaint paragraph 21, and by that paragraph as a whole, as read in the context of the Complaint as made under the Policy.

In relation to Policy paragraph 4(a)(i), the Response does not put in issue above-listed Complaint contentions "(1)(a)" to "(1)(j)(ii)" except, apparently, as to the preamble of "(1)(j)(ii)" whereby Complainant contends that Policy paragraph 4(a)(i) is proven. Therefore, three results follow. First, in relation to Policy paragraph 4(a)(i), the facts contended in those Complaint contentions are admitted by Respondent except that Respondent does not admit that Policy paragraph 4(a)(i) is proven. Second, other than Complaint Exhibit 5 (which is basically contended for through above-listed Complaint contentions "(1)(f)", "(1)(g)", and "(4)(d)"), evidence submitted as rationally probative of those Complaint contentions (i.e. the evidence contended, mainly by above-listed Complaint contentions "(4)(a)", "(4)(b)", "(4)(c)", "(4)(e)", and "(4)(f)", to be contained in Complaint Exhibits 1, 2, 3, 4, 16, and 17) is in that respect immaterial and therefore inadmissible. Third, for the purposes of this proceeding, the facts contended by above-listed Complaint contentions "(1)(a)" to "(1)(j)(ii)" (other than "(1)(f)", "(1)(g)" and the "(1)(j)(ii)" preamble contention that Policy paragraph 4(a)(i) is proven) are ascertained by those contentions themselves.

However, in relation to at least Policy paragraph 4(a)(i), by above-listed Response contention "(1)" the Response does put in issue the preamble of above-listed Complaint contention "(1)(j)(ii)" whereby Complainant contends that Policy paragraph 4(a)(i) is proven. In that respect, Respondent basically makes two contentions. Each is by either or both of pleading or argument, but not by evidence. The first basically is, especially by above-listed Response contention "(1)(b)(ii)", that "Gavagai" is not distinctive of services provided by Complainant. The second basically is, especially by above-listed Response contention "(1)(b)(iii)", that in the Policy paragraph 4(a)(i) expression "identical or confusingly similar" the word "or" is to be read conjunctively (i.e. as "and") rather than disjunctively (i.e. as "or").

In relation to the contended service mark registration, the first of those two contentions by Respondent does not avail Respondent, especially in view of reasoning set out in seven points enumerated in this paragraph. First, by contending against the distinctiveness of the registered service mark, Respondent basically contends against the validity of that registration, and therefore raises an issue of mixed law and fact: the issue of law is of what if any rights are defined by the registration and the issue of fact is whether, as ascertained in accordance with law, there are facts dispositive of those rights. Second, especially in view of the issue of law, the Panel takes judicial notice of 15 U.S.C. §1057 (entitled "Certificates of registration")[6] and of 37 C.F.R. §2.151 (entitled "Certificate")[7] made in accordance therewith. Third, especially in view of the issue of fact, above-listed Complaint contentions "(1)(f)" and "(4)(d)" direct the Panel towards Complaint Exhibit 5, by contending that said Exhibit contains a certificate of Complainant registration in the United States Patent and Trademark Office for the service mark GAVAGAI that at least includes the information contended in above-listed Complaint contentions "(1)(f)" and "(1)(g)". Fourth, the Panel finds the Response puts in issue the facts contended in above-listed Complaint contentions "(1)(f)" and "(1)(g)" so, in view of the second point enumerated in this paragraph, the evidence contained in Exhibit 5 (i.e. the certificate of the service mark registration) is material, relevant, and admissible: it appears to be a copy of a certificate issued completely in accordance with 15 U.S.C. §1057(a) and C.F.R. §2.151, and so, by 15 U.S.C. §1057(b), is "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate". Fifth, having overcome three initial concerns pertaining to the identity of the registrant,[8] the Panel finds that as to Policy paragraph 4(a)(i) the service mark registration certificate proves the facts contended for in above-listed Complaint contentions "(1)(f)" and "(1)(g)". Sixth, as to Policy paragraph 4(a)(i), in this proceeding there is no material evidence contrary to any of the prima facie evidence provided by the certificate. Seventh, the Panel also finds that the certificate also proves that the registration basically has the following three further attributes: the registration number is "2,544,129", the registration "shall remain in force for TEN (10) years" from the date of the registration (i.e. from March 5, 2002), and the registration is based on a date of first use (and of first use in commerce) of "12-0-1999".

In relation to the registered service mark, the second of the two Response contentions (i.e. that in the Policy paragraph 4(a)(i) expression "identical or confusingly similar" the word "or" is to be read conjunctively) does not avail Respondent, especially in view of three points. First, the presumptive meaning of "or" is disjunctive rather than conjunctive. Second, there do not appear to be any indications expressly or implicitly in Policy paragraph 4(a)(i), or elsewhere in the Policy or the Rules, or, for that matter, anywhere else of which the Panel is aware, for departing from applying that presumptive meaning to that occurrence of "or" in Policy paragraph 4(a)(i). Third, the presumptive meaning for that occurrence of "or" is confirmed by Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES Marketing Group Inc., eResolution Case Number AF-0104, Mar. 20, 2000, which includes that

[The respondent] submits that under … trademark law, mere identicality is insufficient to support a conclusion that two marks are confusing, and encourages this panel to interpret paragraph 4(a)(i) in the conjunctive rather than the

disjunctive. ...

The panel declines [the respondent's] invitation to stray from the clear language of the ICANN Policy. Mere identicality of a domain name with a registered trademark is sufficient to meet the first element of the test, even if there is no likelihood of confusion whatsoever.

and by Porto Chico Stores, Inc. v. Otavio Zambon, D2000-1270 (WIPO Nov. 15, 2000), which includes that "The panel considers this issue [of identicality or confusing similarity] is to be resolved by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used" and

"Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy."

In view of all of the above (and especially the four immediately preceding paragraphs), Policy paragraph 4(a)(i) is proven, in that the domain name at issue, <gavagai.com>, is registered by Respondent and is identical to a service mark, GAVAGAI, registered in the United States Trademark Office as registration 2,544,129 and in which Complainant has rights.

Having made the finding set out in the immediately preceding paragraph, in relation to Policy paragraph 4(a)(i) the Panel need not consider further (or at all, as the case may be) whether, to what extent, and with what consequence, the Response puts in issue above-listed Complaint contentions "(1)(j)(ii)(B)" and "(1)(j)(iii)". In doing so, the Panel is aware of decisions under the Policy wherein other panels raised views,[9] or applied views,[10] that Policy paragraph 4(a)(i) requires trademark or service mark rights at the time of the registration of a domain name at issue. As still other panels have done,[11] this Panel will deal hereinafter with whether Complainant had trademark or service mark rights at the time of the registration of the domain name at issue.

Rights or Legitimate Interests

The context in which this part of the discussion occurs includes Policy paragraph 4(c) and Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Policy paragraph 4(c) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

When you receive a complaint, you should refer to [Rule 5] in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of [Policy paragraph] 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

(See footnote 2 hereof for some provisions of Rule 5.) Do The Hustle, LLC v. Tropic Web includes that when, as in this case, "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue" (emphasis in original).

The Response does not put in issue above-listed Complaint contentions "(2)(a)", "(2)(b)(i)", "(2)(b)(ii)", "(2)(b)(iii)", "(2)(c)(i)", "(2)(c)(ii)", "(2)(c)(iii)", "(2)(d)", "(2)(e)", "(2)(g)", "(2)(h)", and "(2)(j)". Therefore, three results follow. First, the facts contended in those Complaint contentions are admitted by Respondent. Second, evidence submitted as rationally probative of those Complaint contentions (i.e. the evidence contended, mainly by above-listed Complaint contentions "(4)(g)" to "(4)(j)" and "(4)(l)" to "(4)(p)", to be contained in Complaint Exhibits 6, 18, 19, 7, and 8 and in Complaint Exhibits 13, 1, 10, 11, 12, 14, and 16) is in that respect immaterial and therefore inadmissible. Third, for the purposes of this proceeding, the facts contended by the Complaint contentions listed in the first sentence of this paragraph are ascertained by those contentions themselves.

The Response does, however, directly or indirectly put in issue above-listed Complaint contentions "(2)(b)(iv)", "(2)(c)(iv)", "(2)(f)", "(2)(i)", and "(2)(k)".

As for above-listed Complaint contentions "(2)(b)(iv)" and "(2)(c)(iv)", Respondent puts them in issue in the sense of contending (by either or both of pleading or argument, but not by producing evidence) in above-listed Response contention "(2)(a)" that there are further facts which amount, respectively, to Respondent making real use of the domain at issue and not passively holding it. The facts contended in above-listed Complaint contention "(2)(g)" are already ascertained by that contention itself and Respondent has not submitted any evidence. Therefore, unless the Response is considered to have implicitly adopted the evidence in Complaint Exhibit 13 (referred to in above-listed Complaint contention "(4)(l)") as being rationally probative of above-listed Response contention "(2)(a)(i)", there is no evidence as to the contentions contained in Response contention "(2)(a)". Even if the Panel were to consider Complaint Exhibit 13 as having been adopted by the Response, Respondent would still not have met its burden: what are referred to as Maryland "trade name" registrations in the search results from the CT Corporation Corporate Charter database actually are merely what are commonly referred to as business name registrations[12] and it seems to the Panel that they do not, per se, confer or evidence "rights or legitimate interests in respect of the domain name" within the meaning of that expression as it appears in Policy paragraph 4(a)(ii). Accordingly, Respondent's contention does not avail.

As for above-listed Complaint contention "(2)(f)", Respondent puts it in issue in the sense of contending (by either or both of pleading or argument, but not by producing evidence) in above-listed Response contention "(2)(b)" that there are further facts which amount to justifications of Respondent non-responsiveness. The facts contended in above-listed Complaint contentions "(1)(e)" and "(2)(c)(iii)" are already ascertained by those contentions themselves and Respondent has not submitted any evidence. Therefore, unless the Response is considered to have implicitly adopted the evidence in Complaint Exhibit 3 (referred to in above-listed Complaint contention "(4)(c)") as being rationally probative of above-listed Response contention "(2)(b)(i)", there is no evidence as to the contentions contained in Response contention "(2)(b)". Even if the Panel were to consider Complaint Exhibit 3 as having been adopted by the Response, Respondent would still not have met its burden: the Policy would basically be rendered a nullity if a respondent's domain name registration that is the very subject-matter of a mandatory administrative proceeding under the Policy could, per se, confer or evidence "rights or legitimate interests" within the meaning of that expression as it appears in Policy paragraph 4(a)(ii) and as a result it has long been well and clearly established, by mandatory administrative proceeding decisions under the Policy, that such registrations do not do so. (See e.g. the following decisions, and decisions in which they are cited: N.C.P. Marketing Group, Inc. v. Entredomains, D2000-0387 (WIPO July 5, 2000) and Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000). Accordingly, Respondent's contention does not avail.

As for above-listed Complaint contention "(2)(i)", Respondent puts it in issue in the sense of contending (by either or both of pleading or argument, but not by evidence) in above-listed Response contention "(2)(c)" that Respondent refutes Complainant's contention that the word "Gavagai" has no obvious connection to Respondent’s purported purpose for obtaining the domain name at issue. (The purported purpose which Complainant contends in above-listed Complaint contention "(2)(b)(i)", which Respondent does not dispute and therefore admits, and which is therefore ascertained for the purposes of this proceeding, is to create a site for art and literature.) The Panel finds that Complainant, by contending Respondent's purported purpose, was contending that the statements of purported purpose were made by Respondent but was not contending that those statements of purported purpose were true. In so finding, the Panel did not evaluate any evidence; there was no evidence. Accordingly, Respondent's contention does not avail. (It seems unfortunate to the Panel that neither party submitted any evidence as to their own connection, or as to the opposite party's lack of connection, to Word and Object. However, the parties contentions as to such connections appear to be more argument than pleading, and when it comes to the Panel's ascertaining whether there has been Policy paragraph 4(a)(iii) bad-faith registration and bad-faith use, the Panel is not subject to the Policy paragraph 4(c) constraint of "evaluation of all evidence presented" and instead largely has the Policy 4(b) preamble prescription of "circumstances … found by the Panel to be present".)

As to above-listed Complaint contention "(2)(k)", Respondent puts it in issue in the sense of contending against above-listed Complaint contentions "(2)(c)" and "(2)(i)" in the ways described in the fourth and sixth paragraphs of this part of this "Discussion". In view of the discussions and findings in those paragraphs, Respondent's contention does not avail.

In view of the seven immediately preceding paragraphs, the burden of production has shifted to Respondent but Respondent has not produced any evidence, and has not adopted appropriate evidence, to meet that burden.

In summary, and with reference to Policy paragraph 4(c), the Panel makes four further findings.

Policy paragraph 4(c)(iii) is phrased in the present tense, yet it has been ascertained for the purposes of this proceeding that Respondent is not using the domain name at issue within the meaning of "use" as that word appears in that paragraph; Policy paragraph 4(c)(iii) cannot avail Respondent.

As for Policy paragraph 4(c)(ii), it cannot reasonably be said to be contended for in any way in this proceeding.

As for Policy paragraph 4(c)(i), as found above, the Panel's view is that the two Maryland business name registrations do not, per se, individually or collectively confer or evidence "rights or legitimate interests in respect of the domain name" within the meaning of that expression as it occurs in Policy paragraph 4(a)(ii). Even if either or both of those registrations did so confer or evidence, under Policy paragraph 4(c)(i) Respondent had the burden of producing evidence that either or both of those registrations were obtained before Respondent had any notice of the dispute. Respondent has contended (solely by way of pleading or argument) that it received an e-mail from Complainant, basically notifying Respondent of the dispute, "shortly after" Complainant registered <gavagai.net>. Registration of that domain name occurred on the calendar day that immediately followed the day on which Respondent registered the domain name at issue, and there is no evidence as to whether either or both of the Maryland business name registrations preceded, or instead followed, that e-mail, so, in respect of those business name registrations, Policy paragraph 4(c)(i) cannot avail Respondent. As for specifically when (in relation to that contended e-mail) the graphic and notice (to the effect that the site was to be for art and literature) first resolved through the domain name at issue, there is a similar lack of evidence, so similar reasoning applies such that once again Policy paragraph 4(c)(i) cannot avail Respondent.

As for the preamble of Policy paragraph 4(c), in this proceeding there are no indications that it avails Respondent.

In view of all of the above (and especially the thirteen immediately preceding paragraphs), the Panel finds that Policy paragraph 4(a)(ii) is proven, in that, based on the Panel's evaluation of all evidence presented, Respondent has no "rights or legitimate interests in respect of the domain name", within the meaning of that expression as it occurs in Policy paragraph 4(a)(ii).

Registration and Use in Bad Faith

The context in which this part of this "Discussion" occurs includes Policy paragraph 4(b).

Policy paragraph 4(b) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that

For the purposes of [Policy paragraph] 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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.

As for each of Policy paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith registration and provide that if any one of such types of registration has been ascertained by a panel then bad-faith use is in turn evidenced via application of the respective one of those three provisions. None of those provisions can reasonably be said to be contended for in any way in this proceeding, notwithstanding above-listed Complaint contentions "(1)(j)(iii)" (that the registration of the domain name at issue is "confusing") and "(3)(b)" and "(3)(f)(iii)" (that the timing of Respondent's registration of the domain name at issue may be evidence of bad faith). Even if the Panel fin