World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Progman Consulting Oy v. Top Business Names / Domain Administrator

Case No. D2010-2271

1. The Parties

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

The Respondent is Top Business Names / Domain Administrator, of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <progman.com> is registered with Rebel.com Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2010. On December 28, 2010, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On December 31, 2010, Rebel.com Corp. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2011.

The Center appointed Gerd F. Kunze as the sole panelist in this matter on February 1, 2011. 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 Complainant was entered into the Finish Trade Register on 29, December 1983. It is the registered owner of the trademark MAGICAD (registration number 216048, dated 15.11.1999; annex 6 of the Complaint) which is used for building services.

The Respondent registered the domain name <progman.com> on April 17, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant submits that Progman Consulting Oy was established in 1983 and has been entered into the Finnish Trade Mark Register on December 29, 1983. It furthermore submits that its primary web address “www.progman.fi” has been registered in 1991.

The Complainant considers <progman.com> to be confusingly similar to the company name Progman Consulting Oy, which is known among its customers. The Complainant acts in the business field of software design. The best known Progman software is Magicad that is the leading 3D Building services design software. The MAGICAD trademark has been used since the beginning of 1999. The Complainant considers that the business name “Progman” has become familiar because of its famous product Magicad around the world.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant submits that <progman.com> is confusingly similar to the company name Progman Consulting Oy. For the Complainant to succeed, the domain name <progman.com> must be confusingly similar to a trademark or service mark in which the Complainant has rights. The existence of the company name (as distinct from trademark rights per se in that name) Progman Consulting Oy is not sufficient under the Policy.

In that context, the Complainant refers to Annex 4 for its submission that its name Progman Consulting Oy was entered in the Finnish Trade Mark Register. However, Annex 4 shows a document that certifies that the company name Progman Consulting Oy was registered in the Finnish Trade Register. Consequently the Panel concludes that there exists no trademark or service mark registration, consisting of, or containing the term “progman” in the name of the Complainant.

According to article 2 of the Finnish Trademark Law, property in a trademark may also be acquired by use, provided the use has been such as to establish the trademark in the market. However, the Complainant did not submit any statement or proof of use of its company name or any other term consisting of or including the term “progman” as a trademark or service mark. As a first conclusion the Panel assumes that the Complainant does not use the term “progman” as a trademark or service mark. This assumption is confirmed by the contents of the website “www.progman.fi” (which according to annex 5 of the Complaint is not registered in the name of the Complainant, but in the name of “PROGMAN OY”, which the Panel assumes to be a related company). The homepage of the website is dominated by advertising for the product MagiCAD, which according to the Complainant is the leading Building Services design software. The Complainant’s trademark MagiCAD is consistently used as registered without any combination with the term “Progman”. This is true also for the different links of the homepage. Only at the bottom line of the website(s) a small texts reads: “Copyright 2006-2010 Progman Oy / Nortamonkatu 1, 26100 Rauma, Finland”. This is clearly no trademark use, but a reference to the company Progman Oy (not to the Complainant) as owner of the website. Also under “contacts” a reference is made to Progman Oy, not to the Complainant. Again this is a clear use of a company name (with address etc), but no trademark use. Interesting is also the text of the link (under “News”) “Lindab choses MagiCAD”, where it is said that the Swedish company Lindab Ventilation AB has signed a cooperation agreement with Progman Oy, the finnish company behind MagiCAD.

In conclusion the Panel finds on the provided evidence that Complainant does not use its company name (Progman Consulting Oy) as a trademark or service mark for the purpose of these Policy proceedings. Also the company name of Progman Oy (which the Panel assumes to be a company related to the Complainant) appears restricted to use as a company name and not used as a trademark or service mark. The term “progman” as such is apparently never used alone (neither as a trademark/service mark nor as a business identifier). Consequently the terms “progman”, “Progman Oy” and “Progman Consulting Oy” have not been established as trademarks or service marks in this case.

In conclusion the Complainant failed to prove that it has rights in a trademark or service mark which is identical to or similar with the domain name <progman.com>.

Under the circumstances the Panel need not to consider whether the Respondent has rights or legitimate interests in its domain name and whether the domain name was registered and is used in bad faith.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Gerd F. Kunze
Sole Panelist
Dated: February 7, 2011

 

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