WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Compumedics, Ltd. v. CompuMedic

Case No. D2001-0485

 

1. The Parties

The Complainant in this administrative proceeding is Compumedics, Ltd. an Australian company with its principle place of business located at 1 Marine Parade, Abbotsford, Victoria 3067, Australia.

The Respondent in this Administrative Proceeding is CompuMedic with an address of World Trade Center, Suite 250L, San Francisco, California 94111, USA.

 

2. The Domain Name and Registrar

The disputed domain name is <compumedic.com>. The Registrar of this domain name is Network Solutions, Inc., of Herndon, Virginia, USA.

By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the ICANN Policy and Rules.

 

3. Procedural History

This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform for Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

The Administrative Panel consisting of one member was appointed on May 17, 2001, by WIPO.

Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on April 3, 2001, by hard copy and on April 9, 2001, by email. The Center dispatched to the Registrar a Request for Registrar Verification on April 8, 2001. On April 11, 2001, having verified that the formal requirements of the Policy and the Rules were satisfied, the Center formally commenced this proceeding. The Respondent filed its Response on April 30, 2001, by email, on May 1, 2001, by fax and on May 4, 2001, by hard copy.

An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.

On May 3, 2001, the Respondent delivered further material by e-mail which, at the request of the Administrative Panel, was provided to it on May 21, 2001. On May 25, 2001, in Procedural Order No.1, the Administrative Panel directed that on or before June 1, 2001, the Complainant could reply to the further material of the Respondent and that the time for the delivery of the decision in this matter was extended to June 16, 2001. On June 1, 2001, further comments were delivered by the Complainant.

 

4. Factual Background

The following information is derived from the Complainantís material.

Since at least as early as 1997, the Complainant and its predecessor Compumedics Holdings Pty. Ltd., have used the designation COMPUMEDICS as both its trade name and its principle trademark in connection with the promotion and sale of a variety of scientific instrumentation and electronic apparatus, including equipment used to monitor and treat sleep disorders.

The COMPUMEDICS mark is an arbitrary term that has no descriptive significance in relation to any goods on which the mark is used.

The Complainant owns trademark registrations for the COMPUMEDICS mark throughout the world as described below:

Mark

Country

Registration No.

Registration Date

COMPUMEDICS

Peopleís Republic of China

1255379

March 15, 1989

COMPUMEDICS

Commonwealth of Australia

B554007

April 18, 1991

COMPUMEDICS

Republic of South Africa

97/10870

July 21, 1997

COMPUMEDICS

Federal Republic of Brazil

820490814

March 2, 1998

COMPUMEDICS

Republic of Indonesia

412458

March 17, 1998

COMPUMEDICS

Switzerland

448914

May 2, 1998

COMPUMEDICS

Federal Republic of Mexico

582895

May 26, 1998

COMPUMEDICS

Kingdom of Norway

190869

June 18, 1998

COMPUMEDICS

Republic of Korea

417642

August 21, 1998

COMPUMEDICS

Republic of Chile

531.147

December 30, 1998

COMPUMEDICS

Socialist Republic of Vietnam

30 979

May 17, 1999

COMPUMEDICS

Israel

113926

July 2, 1999

COMPUMEDICS

Islamic Republic of Iran

86705

July 20, 1999

COMPUMEDICS

Republic of Iraq

36458

August 10, 1999

COMPUMEDICS

Republic of China

00863692

September 16, 1999

COMPUMEDICS

Kingdom of Saudi Arabia

495/7

September 21, 1999

COMPUMEDICS

Spain

000551614

December 22, 1999

The Complainantís trademark registrations are valid, subsisting and in full force and effect.

The Complainant, through its predecessor corporation, applied to register the COMPUMEDICS trademark in the United States on May 20, 1997. On April 4, 2000, the United States Patent and Trademark Office issued a Notice of Allowance for the Complainantís registration of the COMPUMEDICS trademark in the United States.

Since February 1998, the Complainant has owned the Internet domain name <compumedic.com.au>.

The Respondent, itself, is not an actual entity, but is a name adopted for the purpose of registering the domain name, by Mr. Daniel Oppenheim, the Respondentís Chief Executive Officer and administrative and billing contact according to the NSI WHOIS database.

The Respondent conducts no business under the COMPUMEDIC mark or any similar variant. The subject domain name links to an inoperative blank Internet page.

On November 9, 2000, Mr. Oppenheim, made an unsolicited offer to sell the subject domain name to the Complainant for $49,000. The Respondentís offer sent via e-mail stated:

"Since we have been receiving quite a bit of inquiries for what might have been intended for your company instead, we are first offering you the opportunity to purchase this domain before it is auctioned off to the highest bidder and permanently lost to your companyÖI am sure that you are aware of the value and marketing power of a dot<.com> web address for your software and business."

The following information is derived from the Respondentís material.

The Respondent has been operating in the United States since 1994, providing IT services to over 1,250 clients, including: Cisco Systems, Apple Computer, Citibank, Sky Walker Studios, Net Working Solutions, and celebrities: Robin Williams, John Gray (Author of Men are From Mars - Women are from Venus), Michael Tilson Thomas (Conductor of the San Francisco Symphony).

In 1996, the Respondent formed a limited liability company in the State of California. In 1999, CompuCorporation was formed to own and manage the Respondent. It currently owns four companies.

The Respondent has been listed in Dunn & Bradstreet since 1994. In 1999, it was listed under CompuCorporation.

The Respondent was located at the World Trade Center #250L, San Francisco, CA 94111, USA from 1995 to1999 and then moved to 1750 Montgomery St., San Francisco, CA 91111, USA under CompuCorporation. It also has been listed in Yellow Pages and national directories since 1995 and has had advertisements in PCWorld and MacWorld, among many local journals as well. The subject domain name has been hosted under paid hosting services with the same provider, DNAI since the day it was registered.

On January 2, 1998, the Respondent registered the subject domain. Before then, it used <compumedic@aol.com> as its email address since 1994. It still retains both of these and uses its domain as one of its primary means of communication with its clients through a B2B website and through email. Several other websites are being hosted underneath www.compumedic.com as well, such as www.compumedic.com/nylasergroup and www.compumedic.com/consultpath. It also has served as the NIC handle for many other domains over the past three years.

The complainant has been operating since 1997 and exclusively in Australia.

The domain name <compumedics.com> is registered to, "Michael Mann Computer Services," but points directly to the Complainantís website in Australia.

The subject domain name has not been registered in Australia.

An offer for the subject domain inadvertently was made by the Respondent to the Complainant. This was the result of a substantial offer made to the Respondent through Great Domains stating the amount of the subject domain nameís appraised value. The Respondent initially decided not to accept the offer, but two months later decided to entertain the idea further. When Great Domains was contacted, the Respondent was informed that Great Domains no longer had any information about the party who made the offer.

The Respondent then thought of two potential buyers for the subject domain name: CompuMedic.net, and CompuMedics.com. One single email was sent to each stating that the domain name might be sold and for an amount that was under the appraised value. The Respondent was not contacted by either party and no further communication was made.

In supplemental comments, the Respondent made a number of assertions.

In the United States, the Complainant has been "approved for registration" of its trademark, but not yet registered and no registration date has been granted.

The Respondent is filing a petition with the United States Patent and Trademark Office to have the Complainantís registration denied, based on the following grounds:

1. the Respondent has used the mark "CompuMedic" since mid-1994;

2. the Complainantís statements, made in its Complaint in this proceeding, that "CompuMedic" and "compumedics" are confusingly similar marks;

3. the Complainant may have been untruthful in statements made as to the exact usage of "compumedics" during the filing of its request for a United States trademark.

The Complainant replied to the Respondentís supplemental assertions.

Inter alia, the Complainant noted that in its Complaint it stated that its predecessor company applied to register the COMPUMEDICS trademark in the United States on May 20, 1997 and that on April 4, 2001 a Notice of Allowance was issued.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on its long-standing use of the word "compumedics" and its registration of the mark in many jurisdictions throughout the world. It asserts that the subject domain name is "nearly identical" because the only difference is the absence of an "s".

Because the word "compumedic", with or without an "s" is a coined word with no independent meaning, the Complainant says that the Respondent does not have a legitimate interest in the subject domain name. The Complainant also notes that the subject domain name links to an inoperative Internet site, that is, the Respondent does not appear to be making any business use of the subject domain name.

Bad faith is said to flow from the Respondentís unsolicited offer to sell the subject domain name. The Complainant also asserts that the Respondent is not an actual entity, but "Öis a fictitious name adopted by Mr. Oppenheim for the purpose of registering the [subject] domain name. It is alleged that by registering the subject domain name, the Respondent "Öhas prevented the Complainant from reflecting its COMPUMEDICS trademark in a corresponding domain name with a generic top level domain."

B. Respondent

The Respondent contends that it has a prior right to the use of the word "compumedic" in the United States, because it has provided IT services to many clients over many years beginning in 1994. It relies on its incorporation as a company in 1996, office locations and listings in various directories.

Use of the subject domain name and a predecessor name for communication by e-mail is noted.

The Respondent denies bad faith in the registration and use of the subject domain name and offers an explanation for its offer to sell the subject domain name to the Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

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

(ii) the 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.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;

(ii) registration of 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 the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís 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 the web site or location or of a product or service on the web site or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

Reference has been made to other ICANN domain name dispute decisions. Although these decisions are neither binding on this Administrative Panel nor determinative of the issues it must decide, they can be of assistance.

The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.

Identical or Confusingly Similar

An ICANN domain name dispute proceeding generally is not a forum for resolving disputes over trademark rights. In this case, the Complainant has applied to be registered in the United States and the Respondent says that it will contest that registration. The appropriate United Stateís tribunal will determine the matter. The issue in this proceeding is whether the Complainant has established that it has rights to a relevant trademark or service mark.

On the evidence, it is clear that the Complainant has rights to the word "compumedics". It has a lengthy use of the word and has registered it as a trademark in many jurisdictions. At present, its rights include an "approval for registration" (to use the Respondentís words) as a trademark in the United States.

Insofar as the Respondent seeks to infer that the Complainant was less than frank in its submission in this proceeding concerning its trademark registration in the United States, the Administrative Panel is satisfied that the Complainant stated correctly and properly its position.

The issue devolves to a consideration of whether the subject domain name is identical to or confusingly similar to the word "compumedics". On this point, the parties appear to be agreed. The Complaint asserts that the subject domain name is "nearly identical" and the Respondent relies on the contention that the subject domain name and compumedic are "confusingly similar" in its application to defeat the Complainantís registration in the United States.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).

Respondentís Rights or Legitimate Interests

The Respondent meets the Complainantís assertion of no rights or legitimate interests by noting its history of use of the word "compumedic" in the United States. It also refers to a previously used e-mail address containing the word "compumedic" and says that it currently uses both for communications with its customers.

The parties are in different businesses.

Reference is made by the Respondent to several web sites. The site for CompuCorporation lists the Respondent as one of its subsidiary companies. The Respondent is described as follows:

"CompuMedic™ builds and designs customized computer systems in bulk with reasonable prices and name brand components. They also deliver immediate technical support via a remote controlled connection over the Internet. Need help ASAP, at any hour? Contact CompuMedic."

Although, the evidence suggests that the subject domain name is not directly in use, the Complainant has provided no information to displace the facts asserted by the Respondent concerning its history and use of the name "compumedic". The most telling fact against the Respondent is its willingness to sell the subject domain name. Although this suggests that the subject domain is not essential to the Respondentís business, it does not lead to a conclusion that it has no rights or legitimate interests in the domain name.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).

Bad Faith

The strongest evidence supporting the Complainantís allegation of bad faith is the Respondentís offer to sell the subject domain name. The Respondentís explanation of the overture is not compelling, but its conduct overall does not support a finding of bad faith. For example, it has made no effort to register the subject domain name in Australia and the parties are not competitors.

It is likely that the Complainant is prevented from "Öreflecting the mark in a corresponding domain nameÖ" but the Policy adds the proviso "Ö that the Respondent has engaged in a pattern of such conduct." There is no evidence of that in this case.

The Administrative Panel is not satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).

 

7. Decision

Based on the evidence and finding made, the Administrative Panel concludes that the Complainant has not established its case and the complaint is dismissed.

 


 

Edward C. Chiasson
Sole Panelist

Dated: June 6, 2001