The Complainant is Procurelink, LLC, c/o James F. Keenan, Jr., Bernstein Shur, Maine, United States of America, represented by Bernstein Shur, United States of America.
The Respondent is None / Stephen Pappas, New Hampshire, United States of America.
The disputed domain names <ixcm.com> and <ixcm.net> are both registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2009. As initially filed, the complaint related solely to the domain name ixcm.com. On June 4, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On June 5, 2009, a revised complaint was filed with the Center adding an additional disputed domain name <ixcm.net>. On June 5, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. More specifically, the Registrar indicated that the registrant of the disputed domain names was “None.” The Center sent an email communication to the Complainant on June 16, 2009, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the amended Complaint. The Complainant filed an amendment to the amended Complaint on June 22, 2009. In its amendment, Complainant's counsel indicated that he had been in contact with counsel for Respondent and that Complainant was confirming that the Registrant is Stephen Pappas. The Center verified that the amended Complaint, together with the amendment thereto, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the proceedings commenced on June 23, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 14, 2009.
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 17, 2009. 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.
Complainant Procurelink LLC owns U.S. trademark registrations (Nos. 3289654 and 3296472) for the marks iXCM and iIXCM and DESIGN, respectively, as used in connection with custom printing and fulfillment services. See Complaint, Annex 3. The disputed domain names were registered on May 26, 2006 and July 16, 2006, at which time Respondent was an employee of Complainant.
Complainant alleges that the disputed domain names <ixcm.com> and <ixcm.net> are functionally identical to Complainant's trademarks.
Complainant further contends that Respondent has no rights or legitimate interests in the domain names. It maintains that Respondent, as an employee of Complainant, had knowledge of Complainant's intentions of developing the mark iXCM in relation to its business. Complainant indicates that, as part of his employment duties, Respondent was directed to register the <ixcm.com> and <ixcm.net> domain names in Complainant's name. Complainant notes that, pursuant to Section 6 of Respondent's Non-Compete, Confidentiality, Inventions, and Non-Solicitation Agreement with Complainant, dated April 6, 2006 Respondent expressly agreed that all “items of any kind concerning any matters affecting or relating to the present or potential business” of Complainant “are and shall continue to be the property of the [Complainant], and that all such documents or items in the possession or under the control of [Respondent] will be delivered to the [Complainant] immediately upon termination of [Respondent's] employment.” See Complaint, Annex 4.
According to Complainant, Respondent's employment with Complainant was terminated on March 11, 2007, and, despite Complainant's demands, Respondent has refused to turn over the disputed domain names. Complainant asserts that Respondent's registration of the domain names was with full knowledge of Complainant's trademark rights and as agent for Complainant.
Complainant further argues that there is no evidence to suggest that Respondent has been commonly known by the domain names or attempted to secure any trademark or other rights in the domain names. Nor is there any evidence that Respondent is making a legitimate noncommercial or fair use of the domain names. Complainant adds:
“Given the above, it appears that Respondent has registered the domain names primarily for the purpose of hijacking Complainant's trademark rights, misdirecting Internet users to an alternative web site and/or for selling, renting, or otherwise transferring the domain name registrations to a party, like the Complainant, who is the owner of the trademark or service mark, or to a competitor of such party,” Complainant asserts.
To establish the requisite “bad faith” registration and use, Complainant relies on the arguments set forth above with respect to the issue of “rights or legitimate interests.”
The Respondent did not reply to the Complainant's contentions.
The Panel concludes that the disputed domain names, <ixcm.com> and <ixcm.net> are, for all intents and purposes, identical to the mark iXCM. The domain names incorporate the mark in its entirety, merely adding the non-distinctive top-level indicators “.com” and “.net.”
The Panel further finds that Complainant, as a result of its ownership of registrations for, and use of, the iXCM and iXCM and DESIGN marks, has rights in the marks.
The Panel rules that Complainant has met its burden of proving that Respondent has no rights or legitimate interests in the domain name. The evidence indicates that Respondent, while employed by Complainant, was directed to register the disputed domain names in Complainant's name.
There is no evidence that Respondent is using the domain names in connection with a bona fide offering of goods or services, that Respondent is commonly known by the domain name, or that Respondent is using the domain names in a noncommercial manner or making a fair use of the domain names.
The Panel holds that the domain names were registered and are being used in bad faith. As noted above, the disputed domain names were registered by Respondent while employed by Complainant under circumstances making it clear that the domain name registrations were to be in the name of Complainant. Respondent's failure to do so is evidence of bad faith.
The Panel agrees with Complainant that “it appears that Respondent has registered the domain names primarily for the purpose of hijacking Complainant's trademark rights, misdirecting Internet users to an alternative web site and/or for selling, renting, or otherwise transferring the domain name registrations to a party, like the Complainant, who is the owner of the trademark or service mark, or to a competitor of such party.” This is further evidence of bad faith registration and use.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <ixcm.com> and <ixcm.net> be transferred to the Complainant.
Jeffrey M. Samuels
Dated: July 24, 2009