WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Convertech, Inc. v. The Maphx Company DBA Laserlitho, Inc
Case No. D2003-0886
1. The Parties
The Complainant is Convertech, Inc., Wharton, New Jersey, United States of America represented by Jon Anderson of Radix Media.
The Respondent is The Maphx Company DBA Laserlitho, Inc, Wharton, New Jersey, United States of America .
2. The Domain Name and Registrar
The disputed domain name, <convertechinc.com>, is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 5, 2003. On November 6, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the disputed domain name. On November 12, 2003, the Registrar Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and this proceeding began on December 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2003. The Response was filed with the Center on December 19, 2003.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 5, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The disputed domain name, <convertechinc.com>, was registered on February 22, 1999.
The Complainant applied for a United States federal trademark for the term "convertech" in January, 2003, but, thus far, the Complainant has not succeeded in obtaining this proposed trademarkís registration.
5. Partiesí Contentions
- The registered domain name, <convertechinc.com>, is confusingly similar to the Complainantís business name, Convertech Inc. A true and correct copy of the United States Patent and Trademark Office record that applies to the trademark name in question is provided as Annex 3 to this Complaint.
- The disputed domain name, <convertechinc.com>, contains the trademark and full business name of the Complainant.
- There is no evidence of the Respondentís 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.
- There is no evidence the Respondent has been commonly known by the domain name, and the Respondent has not acquired the trademark or service mark rights.
- There is no evidence the Respondent is making a legitimate non-commercial or fair use of the disputed domain name.
- There are circumstances demonstrating that the domain name was registered or acquired primarily for the purpose of selling it to the owner of the trademark (Convertech, Inc.) for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name. A true and correct copy of the email correspondence with the Respondent showing his intent for commercial gain from the Complainant is provided as Annex 4 to this Complaint.
- There are circumstances demonstrating the domain name was registered primarily for the purpose of disrupting the business of the Complainant.
- The disputed domain name should be transferred to the Complainant.
- Complainant most often refers to itself as Convertech, not Convertech, Inc., see Annex IRóliterature of Complainant. As such, the domain name, <convertech.com>, was purchased by the Complainant in February of 2003. This purchase caused the Complainant to cancel its agreement to purchase from the Respondent the domain name in issue for the valuable consideration of $8,000 from the Respondent (see Annex 2R). This clearly demonstrates the Complainantís knowledge and agreement of the value of the disputed domain name to the Respondent.
- Annex 3R as submitted by the Complainant (Annex 3) clearly demonstrates that the Complainant does not hold a registered trademark. This document clearly states under current status "Öexamining attorney is requesting additional information and/or making an initial refusal. However, no final determination as to registrability of the mark has been made." This application was only made in January of 2003, and the report is in August of 2003. The Complainant has clearly misrepresented this fact.
- Respondent registered the disputed domain name in October of 1999. We put <convertechinc.com> in use at that time and continued to use the same up to February of 2003. Respondent enjoys the benefit of marketing its services very successfully for 10 years to many companies that are in the converting market. When Complainant decided not to purchase the disputed domain name from the Respondent (see Annex 3 R) in February of 2003, Respondent resumed its plan to use this for its marketing purposes for products, services and for companies unrelated to the Complainant.
- Complainant by its own admission manufactures core holders and shafts that are used as part of equipment manufactured by others. Complainantís market is very small and narrow compared to Respondentís and totally unrelated.
- Again in response to the Complainantís allegations, the Complainant has only supplied this Panel with partial information. They did not supply this Panel the agreement (see Annex 2R) between the parties of this proceeding. This agreement was prepared by the Complainant and submitted to the Respondent for the purchase of this domain name. See Annex 2R. Instead of completing that transaction, the Complainant chose to purchase a domain name that clearly resembles the way they have marketed their company over the years.
- In addition, Annex 5R is a small sample of how the word Convertech is used commercially in many markets throughout the USA and the world. Please note the trade publication from Japan that is worldwide in circulation called Convertech. While reviewing this Annex 5R, you will notice how commercially common this name is and certainly not unique to the Complainant.
- The Complaint should be denied.
- In addition, the Panel should find the Complainant has attempted through the misuse of this Policy and Panel to accomplish reverse domain name hijacking. As a result, this Panel can make a cost order in favor of the Respondent.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name, <convertechinc.com>, transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
A. Identical or Confusingly Similar
At its Annex 3, the Complainant has exhibited a response dated August 1, 2003, from the United States Trademark Office about the Complainantís January 31, 2003, application for a trademark for the word "convertech". The response informs the Complainant that more information is needed and that in the meantime the Complainantís request to register "convertech" as a trademark can not be granted. In the Panelís view, this shows that the Complainant does not yet possess the trademark rights that would obtain if it had a registered United States trademark for "convertech". In First Tuesday Limited v. The Startup Generator and Christopher Stammer, WIPO Case No. D2000-1732 (February 12, 2000), the panel stated: "Öneither the United States application nor the Community trademark application, nor specific applications in particular countries provide evidence in and of themselves of trademark rightsÖ."
The Complainant also contends that the disputed domain name, <convertechinc.com>, contains the "full business name of the Complainant." However, it is well settled under the Policy that company names or trade names are not protected under the Policy unless they are also used as a trade or service mark (see e.g. Frank Wagner & Son v. Cindy Mahan a/k/a Cindy Maham, an individual, WIPO Case No. D2000-0261, (June 14, 2000). The Complainant has not attempted to demonstrate it has used the term "convertech" as a trade or service mark.
The Panel thus concludes that the Complainant has failed to carry its burden of proof under the Policy at paragraph 4(a)(i). Since the Policy requires the Complainant to prevail under paragraphs 4(a)(i-iii) inclusively, the Panel does not need to reach the issues of rights or legitimate interests or of bad faith.
Reverse Domain Name Hijacking
The Respondent has requested that the Panel find the Complainant has brought the Complaint in bad faith per paragraph 15(e) of the Rules. However, the Panel believes the Complainant was not in bad faith but rather slightly misunderstood the Policy and the Rules.
As to the Respondentís request that the Panel award costs to the Respondent, the Panel knows of no basis for this request in the Policy or the Rules.
For all the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Date: January 19, 2004