WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Altova GmbH v. ChannelZero Co., Ltd. and XML Co., Ltd.
Case No. D2007-0640
1. The Parties
The Complainant is Altova GmbH, Rudolfsplatz of Wien, Austria represented by Holland & Knight LLC, United States of America.
The Respondents are i) ChannelZero Co., Ltd (“CZ”) of Seoul, the Republic of Korea represented by Vision International, the Republic of Korea; and ii) XML Co., Ltd. (“XML”) of Seoul, the Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name <mapforce.com> is registered with Gabia, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2007. On May 4, 2007, the Center transmitted by email to Gabia, Inc. a request for registrar verification in connection with the domain name at issue. On May 3, 2007, Gabia, Inc. transmitted by email to the Center its verification response confirming that CZ is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 16, 2007. The Center verified that the Complaint together with the amendment to 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 Respondents of the Complaint, and the proceedings commenced on May 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 10, 2007. The Response was filed with the Center on June 5, 2007.
The Center appointed Thomas P. Pinansky as the sole panelist in this matter on July 3, 2007. 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.
On August 16, 2007, the Panel issued Procedural Order No. 1 requesting information on the first use of the MAPFORCE mark, and a letter was filed on behalf of the Complainant on August 28, 2007.
4. Factual Background
CZ was incorporated on May 15, 2001. CZ registered two domain names of <chzero.com> and <mapforce.com> on June 14, 2004, and immediately began to use “www.chzero.com” as its URL. But CZ dose not actually use “www.mapforce.com”.
The Complainant is a software company that has developed software application development and data management tools. Altova’s application development and data management tools are utilized by more than 2.5 million registered users in over 100,000 companies worldwide.
The Complainant’s MAPFORCE mark is protected by two U.S. federal trademark registrations, U.S. Registration No. 2,931,826 (MAPFORCE) first used in commerce on September 3, 2003, published for opposition on March 16, 2004 and registered on March 8, 2005, and U.S. Registration No. 3,083,431 (MAPFORCE AND DESIGN) first used in commerce on September 3, 2003, published for opposition on November 2, 2004 and registered on April 18, 2006. The Complainant also holds two European Community Trademark registrations, Nos. 003263407 (MAPFORCE) and 003262797 (MAPFORCE AND DESIGN).
On June 13, 2003, XML entered into an exclusive licensing agreement with the Complainant to act as the sole distributor of the Korean version of XMLSpy, another Altova software development tool. On April 6, 2004, XML also entered into an education partnership agreement with the Complainant by which it became an authorized reseller of the Complainant’s products. Each agreement expressly provided that no acquisition, transfer or assignment of any copyright, trademark, or other intellectual property would result from the agreement, and that the Complainant would retain ownership of all such intellectual property.
5. Parties’ Contentions
A. Complainant
The Domain Name is identical to the Complainant’s mark; the inclusion of a generic top level domain to the mark is irrelevant to the analysis.
XML has no legitimate right to use the domain name. Indeed, XML admitted in correspondence to the Complainant that it does not have any claim to the domain name.
Similarly, CZ has no claim whatsoever to the domain name. It is not known by the Complainant’s mark, and, prior to receiving the Complainant’s demand letter in August 2006, it was not using the domain name in connection with any bona fide offering of goods and services, and currently is not making any legitimate fair use of the Complainant’s mark.
The Respondents have registered and are using the domain name in bad faith
CZ has no prior connection to the Complainant or to the Complainant’s mark, and it is not using, nor has it ever used, the domain name in connection with the provision of goods or services.
CZ’s failure to use the domain name after registering it, and the subsequent transfer to and use of the domain name by XML – use that is plainly intended to benefit from the Complainant’s trademark – are compelling evidence that CZ registered and transferred the domain name in bad faith.
Because it allowed XML to use the domain name in bad faith, CZ is responsible for XML’s bad faith.
The return of the domain name to CZ immediately after receipt of the Complainant’s demand letter is indisputable evidence that CZ always retained control of the domain name and permitted XML’s bad faith use of it.
XML’s acquisition of the domain name in breach of its contract is bad faith within the meaning of the UDRP.
In addition, XML Co. used the domain name in bad faith to divert to its own website users. Request for the “www.mapforce.com” URL redirected to XML’s website “www.xmltoxml.com”. At that website, XML prominently featured links to logos for the Complainant’s various software products, deliberately creating confusion as to the source and ownership of the site.
By its wrongful use of the Complainant’s marks as a domain name, XML intentionally created confusion with the trademark, diverted traffic from and enjoyed increased site traffic and revenue. Accordingly, its use of the domain name constitutes bad faith.
This transfer after receiving the demand letter evidences CZ’s control over XML and its bad faith.
After receiving the demand letter from the Complainant, CZ contacted the Complainant, refusing to transfer the domain name registration, but offering to sell it to the Complainant in exchange for an unspecified amount of money.
CZ’s express offer to sell the domain name to the Complainant on “a good condition” is evidence of bad faith.
B. Respondents
CZ is a lawful right holder who has legally registered and held the disputed domain name to build a website for products already released and to be released in the future.
CZ has registered and used the domain name <mapforce.com> for a reasonable purpose.
If a domain name has been registered before a trademark right to the domain name is established, the registration of the domain name cannot be viewed as being made in bad faith because the registrant was unable to consider the right of an applicant for the trademark who did not exist at the time of registration.
CZ was unable to consider the fact that the Complainant used its trademark MAPFORCE for commercial purposes for the first time on September 3, 2003 whereas CZ had registered the disputed domain name on June 14, 2002. Thus, it cannot be viewed that CZ registered the disputed domain name in bad faith.
Thus, it is evident that CZ has registered and used the disputed domain name for reasonable purposes.
The name of the registrant of the domain name has never been changed since CZ registered the disputed domain name.
In addition, the Respondent contends that XML’s statement that the Complainant has the right to the disputed domain name does not have any legal significance in this case because, if it did, it should be made by the right holder of the disputed domain name.
Unlike the Complainant’s argument, CZ never assigned the disputed domain name to XML except for forwarding the disputed domain name to the website of XML.
CZ agreed with XML to forward “www.mapforce.com” to “www.xmltoxml.com” subject to receipt of deposit, and then to change the registered owner of the domain name to XML upon receipt of the remaining purchase price in full.
XML eventually failed to pay the purchase price in full, so that CZ terminated the agreement and discontinued the agreed use of the disputed domain name resolve to the website of XML.
XML repeatedly demanded CZ to assign the domain name to it because XML needed to win the Complainant’s favor in order to gain a greater bargaining power in entering into a subsequent contract with the Complainant.
Contrary to the Complainant’s contention, it was the Complainant and XML that profited from the use of the disputed domain name by XML because customers who had interest in “Mapforce” products searched the domain name to visit the website of XML, and then they were able to visit “www.altova.com” by clicking the logo of “Mapforce” products displayed on XML’s website.
The fact the XML was controlled by the Complainant can be demonstrated by the fact the XML had to obtain an approval from the Complainant when it simply registered the product name of XML with its website URL.
In conclusion, the Respondent contends that this case would not have been raised if XML had paid the remaining purchase price to register the disputed domain name under its ownership before the assignment agreement was terminated, and the domain name had been transferred to the Complainant.
For the foregoing reasons, the Complainant’s contention, “CZ uses the disputed domain name in bad faith” is inadmissible and unconvincing.
The Panel notes that XML did not submit its own response in these proceedings.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under Paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to the Complainant’s trademark or service mark;
(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.
A. Identical or Confusingly Similar
Due to the bad faith analysis below, the Panel finds that it is unnecessary to address this element of the Policy.
B. Rights or Legitimate Interests
Similarly due to the bad faith analysis below, the Panel finds it unnecessary to address this element of the Policy.
C. Registered and Used in Bad Faith
It is well-established that in order to succeed under the third element of the Policy, a complaint must show that the disputed domain name was registered and is being used in bad faith. In relation to registration, normally speaking, when a domain name is registered before a trademark right is established, the registration of that domain name will not be in bad faith as the registrant could not have contemplated the Complainant's non-existent right. However, panels have recognized that there may be certain situations, when a respondent is clearly aware of a Complainant, and it is clear that the aim of the registration was to take advantage of a Complainant’s rights, in which bad faith may be found. This tends to occur in cases where for example a respondent is aware of a complainant's potential rights, and registers a domain name to take advantage of any rights that may arise from a complainant's enterprises. See for example ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669; also paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and cases cited therein.
In the present case, the Complainant claims (in its brief response to the Panel’s Procedural Order No.1) to have first used the MAPFORCE mark in commerce on September 3, 2003. The Respondent, on the other hand, appears to have registered the disputed domain name on or around June 14, 2002, as conceded by the Complainant. Thus, it seems the disputed domain name was registered by the Respondent a year or more before the date on which the Complainant first claims rights in the MAPFORCE mark.
The Complainant claims that the Respondent has not made any legitimate use of the domain name since its registration, and that the Respondent has used the domain name in bad faith. The Respondent claims, inter alia, that it registered the disputed domain name with the intention of using it in connection with its digital mapping business. However this may be, in order to succeed in such circumstances, a Complainant would generally need to establish that the Respondent knew of the Complainant and/or its potential rights in the mark at the time the domain name was registered. While the Panel may have its suspicions in this matter, it is nevertheless incumbent on the Complainant to prove its case. On balance, the Panel does not consider on the available record that the Complainant has succeeded in doing so, and the Panel declines to make a finding of registration in bad faith against the Respondent in this case. It follows from this that the Complaint must fail.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Thomas Pinansky
Sole Panelist
Dated: September 7, 2007