WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Matrix Resources, Inc. v. Vitty, Inc.

Case No. DBIZ2002-00246

 

1. The Parties

1.1 The Complainant is Matrix Resources, Inc, a Georgia corporation having its principal place of business at 115 Perimeter Center Place N.E., Suite 250, Atlanta, Georgia 30346, United States of America.

1.2 The Respondent is Vitty, Inc, an entity having its principal place of business at 12F-8, No. 237, 2nd Section, Fushing South Road, Taipei 08807, Taiwan, Province of China.

 

2. The Domain Name and Registrar

2.1 The domain name upon which this Complaint is based is <matrix.biz>. The registrar of the domain name <matrix.biz> as at the date of the Complaint is 007 Names, Inc. of 672 Route 202-206, N.Bridgewater, NJ 08807, United States of America ("007").

 

3. Procedural History

3.1 The Complaint was made in accordance with the Start-up Trademark Opposition STOP for .BIZ, adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on May 11, 2001 (the "STOP"), the Rules for Start-up Trademark Opposition STOP for .BIZ, adopted by NeuLevel, Inc. and approved by the ICANN on May 11, 2001 (the "STOP Rules"),and the WIPO Supplemental Rules for Start-up Trademark Opposition STOP for .BIZ (the "Supplemental STOP Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on May 21, 2002,and in hard copy on May 23, 2002. The fees prescribed under the STOP Rules and the Supplemental STOP Rules have been paid by the Complainant. The Complaint stated that a copy of the Complaint together with the cover sheet to the Complaint had been sent to the Respondent as prescribed by the Supplemental STOP Rules, and that a copy of the Complaint had been sent to the concerned registrar of the domain name in dispute.

3.3 On May 23, 2002, the Center sent the Complainant an Acknowledgment of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to 007 on June 12, 2002, by email. No response to the Request for Registrar Verification was received from 007. The Center then conducted its own .BIZ Registry WHOIS data search, which confirmed that the sponsoring registrar of the domain name in dispute was 007, and confirmed the identity and contact details of the Respondent.

3.5 The Center sent a STOP Complaint Deficiency Notification to the Complainant by email on July 10, 2002. This indicated that the Complainant had omitted to indicate whether there are any other proceedings, judicial, administrative or otherwise, currently underway in relation to the domain name.

3.6 The Complainant responded to the Complaint Deficiency Notification by emailing an Amendment to the Complaint to the Center on July 10, 2002. This stated that the Complainant was not aware of any other legal proceedings that have been commenced or terminated in connection with or relating to the <matrix.biz> domain name that is the subject of this Complaint.

3.7 The Center sent a Notification of Complaint and Commencement of Administrative Proceeding on July 11, 2002, to the Respondent by post/courier, facsimile and email and to the Complainant by email.

3.8 The Center sent a Respondent Default to the Respondent and the Complainant by email on August 1, 2002.

3.9 The Center sent a Notification of Appointment of Panelist and Due Date of Decision to the Complainant and the Respondent by email on August 12, 2002.

3.10 The Center sent a Transmission of Case File to the Panel by email on August 12 2002. The documentation was received in hard copy by the Panel on August 15, 2002, in Sydney, Australia.

3.11 All other procedural requirements appear to have been satisfied.

 

4. Factual Background

4.1 Activities of the Complainant

The following information is asserted in the Complaint regarding the activities of the Complainant

Matrix has been doing business for more than 19 years. Matrix is one of the premier sources for both contract consulting and permanent placement of information technology professionals in the United States. Matrixís revenues in 2001 exceeded $216 million. Matrix has offices in Atlanta, Georgia; Bedminster, New Jersey; Birmingham, Alabama; Dallas, Texas; Phoenix, Arizona; and Research Triangle Park, North Carolina. Matrix has placed more than 8,000 information technology professionals.

4.2 The Complainantís trade marks

The following is asserted as fact in the Complaint.

Matrix owns U.S. registrations for, as well as common law rights in and to, its MATRIX trademark (the "MATRIX Mark"), as well as close variants of the MATRIX Mark (collectively, the "MATRIX Marks"). The MATRIX Marks are used by Matrix in connection with its contract consulting and permanent placement service of information technology professionals.

Matrix owns and uses numerous MATRIX Marks to distinctively and uniquely identify its placement service as well as its staffing information and career counseling businesses. Matrix owns U.S. registrations for the MATRIX Marks, including the following:

COUNTRY

MARK

REG. NO. STATUS GOODS/SERVICES

United States of America

MATRIX

1,677,832

Registered

Placement of data processing professionals on both a permanent and contract basis

United States of America

MATRIXRESOURCES.COM

2,432,990

Registered

Providing information on a wide variety of employment and staffing services via global computer networks

United States of America

TEAMMATRIX

2,393,037

Registered

Consultation in the field of information technology; incentive program to promote the recruitment and retention of technical personnel, professionals and consultants

In addition, Matrix has long-standing common law trademark rights in its MATRIX Marks.

The United States registrations for the MATRIX Marks are valid, in full force and effect and constitute evidence of Matrixís exclusive right to use the MATRIX Marks on and in connection with the goods set forth in the registrations. Matrix is the owner of all right, title and interest in and to the MATRIX Marks, which serve to uniquely identify Matrix and its services. The MATRIX Marks are inherently distinctive and serve to identify and indicate the source of Complainantís services to the consuming public. The MATRIX Marks, and services identified with the MATRIX Marks, have been the subject of significant advertising and promotion in the United States.

Matrix has continuously and exclusively used its MATRIX Marks (Registration No. 1,677,832) since at least as early as 1983 to identify its contract consulting and permanent placement service that has expanded throughout the United States. As a result of this extensive use and promotion, the MATRIX Marks are well known among the relevant consuming public, and among firms, ranging in size from start-ups to Fortune 500 companies, with needs for information technology services. Matrix has used the MATRIX Marks extensively throughout the United States, in interstate commerce, to identify, advertise, market and promote its services.

Matrix has continuously and extensively advertised and promoted its MATRIX Marks in numerous print and communications media throughout the United States. Representative samples of advertising and promotional materials showing the MATRIX Marks are attached as Exhibit D. Matrix also utilizes the MATRIX Marks on its web sites, located at <matrixresources.com>, <matrixres.com>, <teammatrix.com>, and <matrixstore.com>.

Complainant has developed substantial goodwill, name recognition and fame in the MATRIX Marks, based on its long and extensive use of the MATRIX Marks. Confirming this recognition, a search of the NEXIS database on May 17, 2002, disclosed 98 mentions in print articles of MATRIX for contract consulting and placement by Matrix Resources, Inc.

4.3 Activities of the Respondent

No Response to the Complaint has been filed and no information has been made available by the Respondent to the Panel concerning the activities of the Respondent.

However, the Panel notes that the Complainant states at paragraph 23 b. of the Complaint that the Respondent has registered 265 other unrelated .BIZ domain names, and these domain name registrations include <aetna.biz>, <2008olympic.biz>, <freemancompany.biz>, <broadwayshow.biz>, <showgirl.biz>, <moviestars.biz>, <monsters.biz>, <iloveny.biz>, <autocenter.biz>, <atkins.biz>, <astrologist.biz>, <bestprice.biz>, <mvp.biz>, <autocity.biz>, <3dtv.biz>, <businessdirect.biz>, and <mp3songs.biz> among others.

 

5. The Complainantís contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the STOP have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the STOP, the Complainant states that the domain name <matrix.biz> is identical, and therefore is confusingly similar, in appearance, pronunciation and sound to Complainantís MATRIX Mark. The Complainant states that the domain name <matrix.biz> incorporates fully the word "MATRIX" that comprises the MATRIX Mark, and that the only difference between the <matrix.biz> domain name and the MATRIX Mark is the domain nameís addition of ".biz" to the MATRIX Mark. The Complainant contends that the addition of ".biz" to the domain name is a necessary element of the domain name, and not a voluntary and arbitrarily chosen addition; thus, ".biz" does not serve to distinguish the domain name from the MATRIX Mark. The Complainant further states that the domain name <matrix.biz> has a suggestion, connotation, and commercial impression that is identical, and therefore is confusingly similar, to that of the MATRIX Mark.

5.3 In reference to the element in paragraph 4(a)(ii) of the STOP, the Complainant alleges that the Respondent has no rights or legitimate interests in the <matrix.biz> domain name because:

(a) the Respondent does not operate a business or other organization under a MATRIX mark. A search of the records of the "COMPANY" files from the LEXIS database, which covers all U.S. public companies, more than 200,000 private U.S. companies, and many thousands of other companies around the world, discloses no records for corporations incorporated as or using the business or corporate name "MATRIX" owned by or listing the name Vitty or Paul Chou as an officer of such corporation;

(b) the Respondent has not acquired any federal or state trademark or service mark rights for a MATRIX mark, and has neither offered or sold any goods or services under a MATRIX mark, nor evidenced any bona fide objective intent to offer or sell any goods or services under a MATRIX mark anytime in the future;

(c) the Respondent owns no U.S. trademark or service mark registrations for a MATRIX mark. A search of the records of the U.S. Patent and Trademark Office and the trademark indices of the fifty states for the word "Matrix" discloses no pending applications or registrations for marks incorporating the word "Matrix" and owned by or listing the names Vitty or Paul Chou as a respondent for any trademark application or registration; and

(d) the Respondent is not making any legitimate non-commercial or fair use of the domain name.

5.4 In reference to the element in paragraph 4(a)(iii) of the STOP, the Complainant alleges that the Respondent has registered or used the <matrix.biz> domain name in bad faith. In support of this assertion, the Complainant states, inter alia:

(a) the Respondent does not conduct any legitimate commercial or non-commercial business under any MATRIX mark;

(b) the Respondent has registered the <matrix.biz> domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, and has engaged in a pattern of such conduct as illustrated by the fact that the Respondent has registered 265 other unrelated .BIZ domain names. The Respondent clearly has no rights in many of these domain names, as they incorporate famous trademarks owned by well-known companies or organizations. None of these domain names are operational. Clearly, the Respondent has registered these domain names for the purposes of reselling them for profit. The Respondent is a domain name reseller. The Respondent has registered the domain name <domainresellers.biz> for the purpose of reselling domain names such as <matrix.biz> for profit;

(c) As further evidence of the Respondentís bad faith, the Respondent is involved in at least two challenges to .INFO domain names registered by the Respondent. Evidence of these .INFO domain name challenges against the Respondent can be seen at the World Intellectual Property Organizationís ("WIPO") Arbitration and Mediation Centerís website;

(d) the Respondentís use of the domain name <matrix.biz> will likely divert consumers away from the official .BIZ website of Matrix. Furthermore, the Respondentís improper registration of the domain name <matrix.biz> will make it more difficult for Complainantís customers and the general public to locate Complainantís .BIZ website; and

(e) if the Respondent sells the domain name to another company, it will undoubtedly cause a likelihood of confusion and actual confusion among Matrixís customers and potential customers when they search the Internet under <matrix.biz>, expecting to find information concerning Matrix and its MATRIX staffing services, and instead find another entity.

 

6. Discussion and Panel Findings

6.1 This section is structured by reference to the elements required by paragraph 4(a) of the STOP. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

6.2 Domain Name identical to Complainantís trade mark or service mark

The domain name in dispute is <matrix.biz>. The Complainant owns, inter alia, a U.S. trade mark registration of the word "MATRIX".

The Panel finds that the domain name in dispute is identical to a trade mark owned by the Complainant, the only difference being the gTLD suffix ".biz" (which is incapable of differentiating the domain name in dispute from the Complainantís trade mark). The Panel therefore finds that the domain name in dispute is identical to the Complainantís "MATRIX" mark.

Accordingly, the Panel finds that Complainant has proven paragraph 4(a)(i) of the STOP.

6.3 The Respondent has no rights or legitimate interests in respect of the Domain Name

As noted, above, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name for the reasons set out in paragraph 5.3 above.

The Panel accepts that the contentions made by the Complainant and listed in paragraph 5.3 (a) to (d) are probably true: certainly, there is no evidence before the Panel that the Respondent operates a business or other operation under the name "Matrix", has acquired any trade mark or other rights in the word "Matrix", or is making any legitimate non-commercial or fair use of the domain name in dispute.

The Respondent has asserted no rights or legitimate interests in the disputed domain name, and there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the STOP (which, if proven to exist by the Respondent, can demonstrate the Respondentís rights or interests in the domain name) apply in the case of the Respondent.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Complainant has proven paragraph 4(a)(ii) of the STOP.

6.4 Domain Name has been registered or is being used in bad faith

As noted, above, the Complainant asserts that the domain name in dispute has been registered and is being used by the Respondent in bad faith for the reasons set out in paragraph 5.4 (a) to (e) above.

To deal with these assertions in turn:

(a) as discussed above, in the Panelís view it is highly unlikely that the Respondent conducts any legitimate commercial or non-commercial business under the name "Matrix";

(b) the Complainant is suggesting that the circumstances of paragraph 4(b)(i) of the STOP apply in the case of the Respondent. The Panel has conducted its own investigations into the domain name registrations of the Respondent and has confirmed that the Respondent is the registrant of some 264 .BIZ domain names, including those cited by the Complainant. In the Panelís view, the Respondent (or its representative) is in the business of registering domain names in which it has no rights or legitimate interests for the purpose of reselling them for profit. It is virtually inconceivable that there could be another reason for which the Respondent has registered such numerous and diverse domain names. The Panel also infers that the Respondent does indeed fall within the circumstances of paragraph 4(b)(i) of the STOP from the fact that no Response has been filed by the Respondent, nor any other communication between the Respondent and the Center;

(c) the Panel does not accept the bare statement made by the Complainant in paragraph 5.4(c) above: the mere fact that the Respondent is involved in "at least" two challenges to .INFO domain names registered by the Respondent does not by itself constitute evidence of bad faith registration or use by the Respondent of this domain name in dispute. However, it comes as no surprise to the Panel that the Respondent is involved in other administrative proceedings given the other circumstances of this dispute and what is known to the Panel about the Respondentís activities;

(d) in the Panelís view, the fact that the Respondentís use of the disputed domain name may make it more difficult for the Complainantís customers to find the Complainantís .BIZ on-line presence does not in itself prove bad faith registration or use of the domain name by the Complainant; and

(e) similarly, the Complainantís final contention in respect of this requirement deals with a hypothetical scenario which is therefore irrelevant and does not show bad faith registration or use by the Respondent of the disputed domain name.

6.5 In conclusion, there is sufficient evidence before the Panel that the Respondent has registered the disputed domain name in bad faith for the purpose of reselling it for profit to a third party. Accordingly, the Panel finds that the Complainant has proved paragraph 4(a)(iii) of the STOP.

 

7. Decision

The Panel has found that all of the requirements of paragraph 4(a) of the STOP have been proven by the Complainant. Accordingly, and for the purposes of paragraph 3(c) of the STOP, the Panel orders that the domain name <matrix.biz> be transferred by 007 to the Complainant.

 


 

Philip N Argy
Sole Panelist

Dated: August 19, 2002