WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Jeff Manning and Manning Navcomp v. Telson

Case No. D2001 Ė 0116

 

1. The Parties

(a) Complainants are Jeff Manning, an individual citizen of the United States ("Mr. Manning"), and Manning Navcomp, Inc., a Texas corporation, having a principle place of business at 4205 Park Drive, Lago Vista, Texas, U.S.A. ("Manning Navcomp"), (collectively "Complainants").

(b) The Complainantsí contact information with respect to this dispute is Jeff Manning and Manning Navcomp, Inc., 4205 Park Drive, Lago Vista, Texas 78645, U.S.A.

(c) The Complainantsí authorized representative in this administrative proceeding is Kristin Jordan Harkins, Esq., of Conley, Rose & Tayon, P.C., 5800 Granite Parkway, Suite 400, Plano, Texas 75024, U.S.A.

(d) Respondent, according to Whois, the InterNIC database, on Network Solutions, Inc.ís website at "www.networksolutions.com" is Telson, 1 Exchange Place, Suite 1000, Jersey City, New Jersey 07302, U.S.A.

 

2. Domain Name and Registrar

(a) The domain names at issue are as follows:

"rastrac.com";

"rastrac.net"; and

"navcomp.net".

(The "Infringing Domain Names").

(b) The registrar for the domain names at issue is Network Solutions, Inc. ("Network Solutions").

 

3. Procedural History

(a) On February 7, 2001, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail for decision in accordance with the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"), the original was received by the Center in hard copy on February 19, 2001, and the four (4) remaining hard copies were received by the Center on February 12, 2001.

(b) On February 7, 2001, the Center sent via e-mail a Complaint Deficiency Notification advising that, as required by Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and Paragraph 5 of the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "Supplemental Rules"), the Center reviewed the complaint and determined that it was deficient in two of the formal requirements. 1) Complainants failed to submit the Complaint in electronic format as required by the Rules, Paragraph 3(b). 2) Complainantsí failed to submit in hard copy four (4) copies of the Complaint as required by the Rules, Paragraph 3(b) and the Supplemental Rules, Paragraph 3(c). Additionally, the Complaint Deficiency Notification advised that unless the deficiencies specified above were cured within five (5) calendar days of the date of the notification, in accordance with the Rules, Paragraph 4(b), the Complaint would be deemed withdrawn without prejudice to the submission of a new Complaint. The deficiencies were satisfied within five (5) calendar days of the date of the notification. (See 3(a) above.)

(c) Payment in the required amount has been made by the Complainant to the Center.

(d) A copy of the Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent or transmitted to both the Respondent and to Network Solutions, Inc. in compliance with the Rules.

(e) February 7, 2001, the Center transmitted to Network Solutions a request for registrar verification in connection with this case.

(f) On February 8, 2001, the Center received Network Solutionsí Verification Response, (1) confirming that Network Solutions had received a copy of the Complaint sent by the Complainant in accordance with the Supplemental Rules, (2) confirming that the Infringing Domain Names are registered with Network Solutions, (3) confirming that Network Solutionsí 5.0 Service Agreement is in effect, (4) confirming that the Respondent is the current registrant of the Infringing Domain Names (5) providing the full contact details that are available in Network Solutionsí Whois database for the registrant, the technical contact and the administrative contact for the Infringing Domain Names, and (6) stating that the Infringing Domain Names are in "Active" status.

(g) On March 2, 2001, the Center transmitted via post/courier and e-mail Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent and via e-mail to the Complainant. The Center advised that (1) the response was due by March 21, 2001, (2) in the event of default the Center would appoint a Panel to review the facts and to decide the case, (3) the Panel would be entitled to draw such inferences from Respondentís default as it considers appropriate, (4) Complainants had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response was due, (5) the fees for the administrative proceeding would be paid in their entirety by Complainants, (6) the Panel would decide the case within 14 days of its appointment, and (7) the Center could be contacted at stated postal and e-mail addresses, a stated telephone number, and a stated fax number.

(h) On March 23, 2001, the Center transmitted via e-mail a Notification of Respondent Default to the Respondent and via e-mail to the Complainants advising that Respondent had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for submission of its Response and advising that the Center would proceed to appoint an Administrative Panel based on the number of panelists designated by the complainant.

(i) On April 2, 2001, the Center transmitted to the Complainant via e-mail and to the Respondent via e-mail, Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Gaynell C. Methvin had been appointed as the single panelist, and that the decision would be due on April 17, 2001.

(j) On April 2, 2001, the Center transmitted the file in this case via post/courier and e-mail to the appointed panelist, Mr. Methvin.

 

4. Factual Background; Partiesí Contentions

a. The Trademarks

The Complaint (∂ 12) is based on various trademarks and service marks registered in the U.S. Patent and Trademark Office.

Complainantsí products and services include:

"Software and systems relating to tracking mobile objects geographically separated from a base station for distributed asset or fleet management systems."

Copies of Mr. Manningís Trademark registration for "RASTRAC" and Service Mark filing receipt for MANNING NAVCOMP are attached to the Complaint, Annex 3, Exhibits 3A and 3B.

b. The Complaint

Complainants in support of their position assert the following:

"[12] Mr. Manning has adopted and has developed substantial rights and goodwill in the trademarks and service marks for RASTRAC®, NAVCOMP™ and MANNING NAVCOMP™. These marks are used in commerce in connection with the advertising and sale of mobile tracking software and systems in the United States and throughout the world. See Affidavit of Jeff Manning, ∂ 6, Annex 3.

Complainants have been using the mark RASTRAC® to identify their good and services at least as early as May 1995 and such use has been continuous and continues today. Mr. Manning filed for and obtained United States Trademark Registration No. 1,963,422 for RASTRAC for use in connection with "navigational computer software and userís manual sold together as a unit." See Affidavit of Jeff Manning, ∂ 7, Annex 3. A copy of the United States Certificate of Registration is attached as Exhibit 3A to the Affidavit of Jeff Manning, Annex 3. The registration issued on March 19, 1996, is and has been in full force and effect and is valid in all respects. See Affidavit of Jeff Manning, paragraph 7, Annex 3.

Complainants have also been using the marks NAVCOMP™ and MANNING NAVCOMP™ to identify their tracking software and systems. Complainants first began using the marks at least as early as June 1994 and such use has been continuous and continues today. See Affidavit of Jeff Manning, ∂ 8, Annex 3. Mr. Manning filed on September 9, 1999, United States Service Mark Application Serial NO. 75/799,196 for registration of MANNING NAVCOMP™ based on the use of the mark since at least as early as June 1994. See Affidavit of Jeff Manning, ∂ 9, Annex 3. A copy of the application filing receipt from the United States Trademark Office is attached as Exhibit 3B to the Affidavit of Jeff manning, Annex 3.

Complainant Manning Navcomp is the registrant of the following domain names containing the marks RASTRAC® and NAVCOMP™:

"rastrac.org"

"navcomp.com"

"navcomp.org"

See Affidavit of Jeff Manning, ∂ 10, Annex 3.

Copies of the printout of the WHOIS database searches conducted for Complainantsí domain names on January 8, 2001, are provided as Exhibits 1D, 1E and 1F attached to the Affidavit of Kristin Jordan Harkins, Esq., Annex 1 hereto.

Complainants have devoted considerable efforts advertising and promoting their products and services offered under the marks and have developed recognition in the marketplace for tracking software and systems bearing the marks RASTRAC®, NAVCOMP™ and MANNING NAVCOMP™. Complainantsí use of the marks in commerce in connection with the advertising and sales of their software and systems has been worldwide in over twenty-three (23) countries. See Affidavit of Jeff Manning, ∂ 11, Annex 3.

By virtue of their considerable marketing efforts, Complainantsí sales of tracking software and systems under RASTRAC®, NAVCOMP™ and MANNING NAVCOMP™ have increased throughout the years as follows:

1994 Approximately 5,000 U.S. Dollars

1995 Approximately 50,000 U.S. Dollars

1996 Approximately 98,000 U.S. Dollars

1997 Approximately 94,000 U.S. Dollars

1998 Approximately 245,000 U.S. Dollars

1999 Approximately 794,000 U.S. Dollars

2000 Not available

See Affidavit of Jeff Manning, ∂ 12, Annex 3.

Complainants have advertised and promoted their tracking software and systems under RASTRAC®, NAVCOMP™ and MANNING NAVCOMP ™ on the Internet. Complainantsí presence on the Internet prominently displays their marks to identify and promote Complainantsí tracking software and systems. See Affidavit of Jeff Manning, ∂ 13, Annex 3. Copies of exemplary pages from the Complainants website at

www.navcomp.com

are attached as Exhibit 3C to the Affidavit of Jeff Manning, Annex 3.

Complainants have also advertised and promoted their tracking software and systems under RASTRAC®, NAVCOMP™ and MANNING NAVCOMP ™ in a variety of industry specific trade magazines. The following exemplify Complainantsí advertising and promotional activities in trade journals:

GPSWorld Showcase December 1995 Page 24

Phillips 1996 GPS Directory Winter Edition Page 183

Phillips 1997 GPS Directory Summer Edition Page 207

Radio Resource Magazine April 1997 Page 20

Cleaner September 2000 Page 78

See Affidavit of Jeff Manning, ∂ 4, Annex 3. Copies of these advertisements and promotions are attached as Exhibit 3D to the Affidavit of Jeff Manning, Annex 3.

As a result of longstanding use and sales throughout the United States and the world, Complainantsí marks for RASTRAC®, NAVCOMP™ and MANNING NAVCOMP™ HAVE BECOME ACCEPTED BY THE PURCHASING PUBLIC. The marks serve to distinguish Complainantsí tracking software and systems from the goods and services of others. See Affidavit of Jeff Manning, ∂ 15, Annex 3. Complainants, through their efforts, skill and experience, have acquired and now enjoy substantial goodwill and a valuable reputation through the marks. The maintenance of high standards of quality and excellence for Complainantsí tracking software and systems has contributed to this valuable goodwill and reputation. See Affidavit of Jeff Manning, ∂ 15, Annex 3. The good will embodied in the RASTRAC®, NAVCOMP™ and MANNING NAVCOMP ™ marks, and consequently Complainantsí valuable reputation and credibility in the tracking industry, depend on the integrity of the marks and identification exclusively of Complainants, and not of any other source.

[13] In accordance with Rules, ∂ 3(b)(ix) and Policy, ∂ 4(b) and (c), the factual and legal grounds on which this Complaint is based further include the following:

· The Disputed Domain Names are Identical or Confusingly Similar to the Marks in which Complainants have Rights

The disputed domain names "rastrac.com" and "rastrac.net" are identical to Complainantsí mark RASTRAC®. RASTRAC® is a term invented by Complainants and has no ordinary meaning in the trade. See Affidavit of Jeff Manning, ∂ 16, Annex 3. The disputed domain name "navcomp.net" is also identical to Complainantsí mark NAVCOMP™ and is confusingly similar to Complainantís mark MANNING NAVCOMP™, as it is identical to the dominant portion of the mark "navcomp." NAVCOMP™ is also a term invented by Complainants. See Affidavit of Jeff Manning, ∂ 17, Annex 3. Respondentís registration and use of the disputed domain names which are identical or confusingly similar to the marks invented and owned by Complainants are in connection with tracking software and systems which compete directly with those Complainants. Such use by Registrant is misleading and causes confusion to consumers who are diverted away from Complainantsí software and systems. See Affidavit of Jeff Manning, ∂ 18, Annex 3.

· Respondent Has No Rights or Legitimate Interests in the Disputed Domain Names:

Upon information and belief, Respondent has not and does not use the disputed domain names in connection with a bona fide offering of goods or services. See Affidavit of Jeff Manning, ∂ 19, Annex 3. A review of Respondentís web pages located at the disputed domain names addresses indicates that Respondent uses the terms, "FleeTrak," "Autofind" and "Memtrack" to identify tracking software and systems. Nowhere on these pages is the use of the marks other than as domain names, See Affidavit of Kristin Jordan Harkins, Esq., ∂ 4, Annex 1. Copies of representative pages located at these addresses are attached as Exhibit 1G, 1H and 1I to the Affidavit of Kristin Jordan Harkins, Esq., Annex 1. Respondent is not commonly known by the disputed domain name. See Affidavit of Jeff Manning, ∂ 19, Annex 3. Further, Respondentís registration and use of the disputed domain names cannot be said to be a legitimate noncommercial or fair use of the domain name.

Complainants have not licensed or otherwise permitted Respondent to us any marks or to apply for or use any domain name incorporating any of Complainantsí marks RASTRAC®, NAVCOMP™ or MANNING NAVCOMP™. See Affidavit of Jeff Manning, ∂ 20, Annex 3. In addition, the fact that RASTRAC®, NAVCOMP™ are terms that were invented by Complainant, Respondent would not legitimately choose to use these terms unless it is seeking to create an impression of an association with Complainants.

· Respondent Has Registered and Is Using the Disputed Domain Names in Bad Faith:

The disputed domain names resolve to websites which advertise Respondentís "FleeTrak" tracking systems and "Autofind" and "Memtrack" software for fleet management. Respondentís products and services directly compete with Complainantís tracking software and systems which are sold under their marks. Respondent doe not use the terms "rastrac" or "navcomp" in the web pages other than the domain name use. Respondent registered the domain names in 1999 long after Complainants adopted their marks and began using them in commerce in 1994 and 1995 for the advertising and sale of their tracking systems and software. Given Complainantsí prior use of their marks in commerce in connection with the advertising and sale of their tracking software and systems which compete directly with those of Respondent and the fact that the trademarks are terms invented by Complainants, there is no plausible circumstance in which Respondent would have been unaware of Complainantsí rights in and to their trademarks at the time of registration of the disputed domain names. There is also no plausible situation in which Respondent could have adopted the identical or confusingly similar invented marks owned by Complainants and registered them as domain names. See Affidavit of Jeff Manning, ∂ 21, Annex 3.

There is also no plausible explanation in which Respondent could legitimately use the disputed domain names in good faith. Complainantsí earlier invention, adoption and use of the marks in connection with tracking software and systems which compete with those of Respondentís and the fact that Respondentís use of the marks is limited to the domain names, obviously indicates that Respondent is using the disputed domain names in bad faith with the intent to misleadingly divert consumers from Complainants to Respondent. See Affidavit of Jeff Manning, ∂ 22, Annex 3."

c. Remedies Requested

As for relief, Complainants request at Paragraph [14]:

"In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described in Section V above, the Complainants request the Administrative Panel appointed in this administrative proceeding issue a decision that all contested domain names "rastrac.com", "rastrac.net" and "navcomp.net", be transferred to the Complainant, Jeff Manning."

d. Respondentís Answer

Respondent has filed no answer, or any other document, with the Center.

 

5. Discussion and Findings

Paragraph 4 of the Policy directs that Complainants must prove, with respect to the domain names in issue, each of the following:

(i) The domain names in issue are identical or confusingly similar to the Complainantsí trademarks, and

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

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for purposes of Paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

a. Identity or Confusing Similarity

Complainants urge, and have the burden of proving, that the domain names in dispute are either identical to, or confusingly similar to, the Complainants trademarks. Respondentís failure to respond does not relieve Complainants of their burden of proof on this element or on either of the other two elements of Paragraph 4(a) of the Policy. However, Respondentís failure to deny any of Complainantsí averments permits this panel to take Complainantsí averments as true and to draw appropriate inferences.

On their faces, the domain names in issue incorporate the terms "rastrac" and/or "navcomp," a nickname for "Manning Navcomp, Inc." Identity is clear. In light of the truth and controlling nature of the facts set forth in the Complaint, paragraph 12 through 13, the Panel finds that the domain names in issue are confusingly similar to the Complainantsí trademarks.

b. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) the validity of any of Complainantsí trademarks or service marks, (2) Complainantsí rights in those marks with respect to Complainantsí services and goods, (3) the global goodwill associated with those marks, or (4) any fact averred by Complainants as to promotion of the marks, use of the marks, and total sales of services and goods under the marks. Accordingly, such facts are found to be true.

No challenge has been leveled with respect to Complainantsí averments as to registrantís conduct.

In light of the foregoing, it is found that this record demonstrates that Respondent has no rights or legitimate interests vis-a-vis "rastrac.com," "rastrac.net" and/or

"navcomp.net."

c. Registration and Use in Bad Faith

Registration of the domain name in issue in bad faith is a matter of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by Complainants.

The facts asserted by Complainants in support of their position that Respondentís registration was in bad faith are found in the Complaint in paragraph [13]. These facts are found to be true and as such demonstrate that Respondent has registered the domain names "rastrac.com;" "rastrac.net" and "navcomp.net" in bad faith.

d. Paragraph 4.c Factors

With respect to the domain name in issue, by failing to respond to the Complaint, Respondent has failed to prove any of the three circumstances set out in Paragraph 4(c) of the Policy, viz.:

(i) before any notice to Respondent of the dispute, Respondentís use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,

(ii) Respondent or a related entity has been commonly known by the domain name, and

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

As averred by Complainants and properly inferred from the undisputed facts as to Respondentís conduct, each of these three factors must be resolved in favor of Complainants.

 

6. Decision

The panel has jurisdiction of this dispute. Respondent has received notice of the commencement of this proceeding, the Policy, the Complaint, and the consequences of Respondentís default. Respondent has been afforded due process.

With respect to the request for transfer of the domain names at issue, the Panel decides that Complainants have carried their burden of proving (a) the domain names in issue here are identical to or confusingly similar to the Complainantsí marks, (b) Respondent has no rights and no legitimate interests in respect of the domain name in issue, and (c) the domain names in issue have been registered and used in bad faith by Respondent. Accordingly, the Panel requires that the registration of the domain names "rastrac.com," "rastrac.net" and "navcomp.net" be transferred to Complainants.

 


 

Gaynell C. Methvin
Sole Panelist

Dated: April 17, 2001