World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Progman Consulting Oy v. Whois Watchdog

Case No. D2010-1393

1. The Parties

Complainant is Progman Consulting Oy of Rauma, Finland, represented internally.

Respondent is Whois Watchdog of Shanghai, Shanghai, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <magicad.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2010. On August 18, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On August 18, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint 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 Respondent of the Complaint, and the proceedings commenced on August 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2010. Respondent did not submit any response. Accordingly the Center notified Respondent’s default on September 10, 2010.

The Center appointed Richard G. Lyon as the sole panelist in this matter on September 14, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding.1 The Panel has submitted his 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

Complainant is a software house specializing in products used for building services such as heating, piping, ventilation, and electrical design. One of its principal products, named MagiCAD, is a suite of software applications for use in computer-aided design (universally abbreviated as “CAD” throughout the software industry) for use in building services. According to the Complaint, but without supporting evidence, Complainant has actively marketed and sold or licensed its MagiCAD products continuously since early 1999.

Complainant holds a number of registered trademarks for MAGICAD, including marks registered with the applicable authorities in Complainant’s home country of Finland and in the European Union, People’s Republic of China, and the Russian Federation. Complainant’s Finnish mark was formally registered in November 1999.

The record reveals very little about Respondent beyond the contact details furnished with the Complaint. Respondent registered the disputed domain name in December 1999. According to the Complaint, and verified by the Panel’s examination of the Internet archive at “www.archive.org”, the only use to which the disputed domain name has been put is referring an Internet user who enters it into his browser to a “parking page” of hyperlinks, many of them related to building services-related software and CAD products. The Internet archive indicates first such use of the disputed domain name in 2004.

5. Parties’ Contentions

To the extent relevant to the Panel’s Discussion and Findings, Complainant’s contentions are set forth in Section 6. Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Complainant has carried its burden of proof under each of the necessary requirements in paragraph 4(a) of the Policy.

A. Identical or Confusingly Similar

Complainant has demonstrated rights in its nationally- (and EU community wide-) registered trademarks for MAGICAD, and the disputed domain name is identical except for the generic top-level domain indicator (“.com”), which is disregarded in determining identity or confusing similarity.

B. Rights or Legitimate Interests

Complainant has never licensed Respondent to use its trademarks, Respondent has never been known by the disputed domain name, and the record reveals no other basis for finding that Respondent has rights or legitimate interests in the disputed domain name. Use of a domain name for click-through revenues from products or services related to or competitive with the mark owner’s products or services, without more, is not legitimate under the Policy.

C. Registered and Used in Bad Faith

Respondent’s parking page use of the disputed domain name is classic cybersquatting. See, e.g. Stanworth Development Limited v. BWI Domain, WIPO Case No. D2008-1646. But this proves only one of the conjunctive requirements of paragraph 4(a)(iii) of the Policy.

Paragraph 4(a)(iii) requires proof not only of use in bad faith, but also that the disputed domain name was registered in bad faith. Complainant’s allegation, unsupported by any evidence, that “Respondent registered and used the domain name being fully aware of the existence of the Complainant and its marks” is by itself insufficient to establish this necessary Policy element, even though unanswered by Respondent. Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172 (“Failure to respond in a Policy proceeding does not constitute an admission of any pleaded matter or result in the Policy equivalent of a default judgment.”); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.6. Registration in bad faith may, however, be inferred from the circumstances presented in this case. Respondent’s only use of the disputed domain name is for a “parking page” containing hyperlinks that relate to the business for which Complainant uses the trademarks that the disputed domain name copies. Even though such use apparently first occurred five years after registration, that fact, plus the obvious fact that the trademark at issue is distinctive and not a common word, allow the Panel to infer that registration of the disputed domain name did occur with knowledge of Complainant’s trademark and intent by Respondent to take advantage of whatever goodwill attached to that mark. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Respondent’s registration of the disputed domain name in the month immediately following Complainant’s first formal trademark registration (in Finland) provides a firmer foundation for this inference.

D. Delay

Complainant commenced this proceeding more than ten years after Respondent registered the disputed domain name. It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy. See Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091; The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447. In certain circumstances a mark owner’s delay in enforcing its rights under the Policy may lend support to defenses under paragraph 4(c)(i) and 4(c)(ii) of the Policy, but there is no indication in this case that Respondent’s use of the disputed domain name - strictly for related hyperlinks - would give rise to any such defense.

7. Decision

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 name <magicad.com> be transferred to Complainant.

Richard G. Lyon
Sole Panelist
Dated: September 17, 2010


1 The Center’s records indicate that the Complaint was actually delivered to Respondent, so there is no issue of jurisdiction. See Rules, paragraph 2(a): ”Achieving actual notice, … shall discharge [Provider’s] responsibility. . .”

 

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