World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

DeFelsko Corporation v. Michael Kennedy

Case No. D2012-1283

1. The Parties

The Complainant is DeFelsko Corporation of Ogdensburg, New York, United States of America, represented by WRB-IP LLP, United States of America.

The Respondent is Michael Kennedy of Farnborough, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <posisoft.net> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2012. On June 22, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2012, the Registrar 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 June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 18, 2012. The Complaint was received by the Respondent on June 28, 2012. The Center had sent it to him at his address in Farnborough and also to the London address for the administrators.

On June 27, 2012, the Registrar advised the Center that the disputed domain name (the registration of which was set to expire on August 27, 2012) would be placed on Registrar Lock status until the UDRP proceedings were concluded. If either party wished to renew the disputed domain name, then that party should consult with the Registrar.

The Center appointed Sir Ian Barker as the sole panelist in this matter on July 24, 2012. 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 is a United States manufacturer of coating thickness gauges, inspection instruments and companion products. It has been in business for 45 years during which time it has pioneered many technologies and has established a worldwide reputation as a manufacturer of quality inspection instruments.

Since 1994, the Complainant has continuously used the mark POSISOFT in connection with software used with its coating thickness gauges and inspection instruments. The Complainant uses the expression “posi” as an indicator of its products. It has spent large sums in marketing the “posi” family of marks. It has a substantial presence on the Internet.

The Complainant has trademark registrations for the expression “posisoft” in many countries, including the United States (1996) and the European Union (1998). It has maintained a website since 1995 featuring goods under the POSISOFT mark.

The Complainant gave the Respondent no authority to reflect its trademark in a domain name.

The disputed domain name was registered on August 27, 2011, at a time when the Complainant’s trademark was well-known worldwide.

The Respondent failed to respond to a “cease and desist” letter sent on behalf of the Complainant on May 24, 2012.

The only content on the website accessed by the disputed domain name, placed there after the ‘cease and desist’ letter had been sent, is a blog about developing software.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions were supported by an affidavit from David Beamish, President of the Complainant company.

The disputed domain name is identical to the Complainant’s registered trademark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant gave him none.

The Complainant’s trademark is not an existing word in any language but a “made-up” term and is, thus, of the strongest significance in the spectrum of marks.

The Respondent’s web content, posted after the “cease and desist” letter had been sent, was designed to justify the Respondent’s registration of the disputed domain name. See Sportingbet Plc, Internet Opportunity Entertainment (Sports) Limited v. Rough Media, WIPO Case No. D2011-0320.

The Respondent registered the disputed domain name in bad faith and is using it in bad faith.

It must be inferred that the Respondent knew of the fame of the Complainant’s mark at the date of registration. The Complainant had a large presence on the Internet and its registered trademarks in the United Kingdom and the United States could easily have been searched.

Moreover, the Respondent did not use the disputed domain name to identify an active website until he had received the Complainant’s “cease and desist” letter to which he made no reply.

The Respondent owns some 655 other domain names which shows a pattern of conduct aimed at preventing trademark owners from reflecting their marks in domain names.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(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

The disputed domain name is identical to the Complainant’s registered trademarks. Paragraph 4(a)(i) of the Policy has been established.

B. Rights or Legitimate Interests

The Complainant gave the Respondent no rights to reflect its trademarks in the disputed domain name. That fact is enough to satisfy paragraph 4(a)(ii) of the Policy in the absence of any evidence that one of the limbs of paragraph 4(c) of the Policy applies.

The Respondent, had he elected to file a Response, could have sought to demonstrate that one or more of the situations described in paragraph 4(c) of the Policy might apply to him. In the absence of any evidence, the Panel concludes that the Complainant has established paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Although bad faith registration and bad faith use need separately to be proved, the Panel has no hesitation in conferring that both apply here.

The Complainant has established a worldwide reputation for its products and marks over 45 years. It has had registered trademarks and Internet presence for many years. The registration of the disputed domain name occurred less than a year ago. It was effected by someone who must have familiarity with the domain name market, given the number of domain name registrations, the Respondent appears to own. The Respondent did not use the disputed domain name to identify an active website until he had received the Complainant’s “cease and desist” letter. Moreover, the response to the “cease and desist” letter of posting a blog, instead of attempting to vindicate his conduct, has all the hallmarks of bad faith.

In those circumstances, the Panel is able easily to infer bad faith registration and use and paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <posisoft.net> be transferred to the Complainant.

Sir Ian Barker
Sole Panelist
Dated: August 1, 2012

 

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