WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DeFelsko Corporation v. Luc Claes, Positive Software SPRL
Case No. D2012-1345
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 Luc Claes, Positive Software SPRL of Wavre, Belgium, represented pro se.
2. The Domain Name and Registrar
The disputed domain name <posisoft.com> (the “Domain Name”) is registered with NameSecure L.L.C. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2012. On July 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 2, 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 for the Domain Name.
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 July 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2012. The Response was filed with the Center on July 18, 2012.
The Center appointed Warwick Smith as the sole panelist in this matter on August 1, 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.
By Procedural Order No. 1 dated August 14, 2012, the Panel requested the Complainant to supply an affidavit which appeared to have been mistakenly omitted from the Complaint. The Panel also requested further statements from each of the parties. The time for the Panel to give its Decision in the case was extended to Thursday, August 23, 2012, to enable the additional documents to be provided and considered by the Panel, and for the Panel to determine whether procedural fairness might require that the parties be permitted to file supplementary statements in reply.
The Complainant provided the missing affidavit, and both parties submitted their supplementary statements, on August 16, 2012. All of those documents have been considered by the Panel in coming to its Decision.
4. Factual Background
A. The Complainant
The Complainant is an American corporation which manufactures coating thickness gauges, inspection instruments, and related products.
According to the Complaint, the Complainant has been supplying Posisoft software products in the United States and Europe continually since 1994, and in Belgium since 1996.
The Complainant says that “Posisoft” is an invented expression (coined by it), and that its Posisoft products form part of a “family” of products with names commencing with “Posi” – e.g., Positector, PosiPen, PosiTest, etc.
The Complainant holds United States and European Community trademark registrations for the word mark POSISOFT. The United States registration covers “computer software for coating thickness measuring gauges”, and it has been in force since December 5, 1994. The Community Trademark, covering the same goods, has been in force since April 1, 1996.
The Complainant has maintained a website since December 22, 1995, and its Posisoft products have been featured on that website continuously since 1996.
The Complainant says that it has never had any relationship with the Respondent which might have entitled the Respondent to use the Complainant’s POSISOFT mark in a domain name, and that it has been unable to find any evidence of the Respondent having used the Domain Name in connection with any bona fide offering of goods or services. The Complainant also asserts that “Posisoft” is not a name by which the Respondent is or has ever been known.
The Complainant says that it first became aware of the Respondent’s registration of the Domain Name in May 2012, when it tried to register the Domain Name itself. In response to a question from the Panel as to why it had taken the Complainant more than 12 years to realise that the Domain Name had been registered by someone else, the Complainant submitted an affidavit sworn by its President explaining that until recently the Complainant’s corporate website at “www.defelsko.com” had provided an adequate portal for the online marketing of the Complainant’s Posisoft software. There was not seen to be any need to maintain separate domain names corresponding to each of the Complainant’s products. However, with the increasing popularity of Internet cloud-based applications, the Posisoft software has evolved from an installed application residing on a user’s personal computer, to an Internet application, requiring its own dedicated website for direct consumer access and ease of use. That technological change was the reason for the Complainant turning its mind in 2012 to the possibility of registering the Domain Name.
B. The Respondent and the Domain Name
The Domain Name was created on January 11, 2000. It does not resolve to any active website and apparently has never done so. The only thing on the website at the Domain Name is the wording “Luc Claes (Positive Software)”.
The Respondent says in his Response that Positive Software SPRL is the name of his software consultancy company, which was founded in February 1993. He attached an extract from the February 27, 1993 edition of “Moniteur Belge”, which set out part of the Constitution of this company. Mr Claes’ name appears in this document as one of the company’s founders.
A copy of the Respondent’s Profile page on LinkedIn contains the designation “Positive Software (Self-employed)”.
The Respondent says that the Domain Name was selected because it was an obvious abbreviation for “POSITIVE SOFTWARE” – better, for example, than <positive-software.com>.
The Respondent acknowledges that the Domain Name has not been used for a website, but he says that it has been heavily used since 2000 for email and with Google apps. He says that for 12 years he has been using addresses like “email@example.com”, and “firstname.lastname@example.org”, for communications with customers and suppliers, and for administrative matters such as domain name registrations and banking communications. The email address “email@example.com” has also been used as his contact email address as author or contributor in “many open-source projects”.
In response to a request from the Panel, the Respondent provided a number of documents showing his use of the email address “firstname.lastname@example.org” going back as early as 2002, primarily in the course of his participation in various “open source” software projects.
In answer to a question from the Panel asking why the Respondent had not established a website at the Domain Name, the Respondent stated that a website is not critical for a consultancy business relying on “word of mouth” referrals. On the other hand, a specific mail domain such as “email@example.com” or “firstname.lastname@example.org is critical”. The Respondent expressed the view that alternatives like “email@example.com” would not feel “professional”.
C. Pre-commencement Communications between the Parties
The Complainant’s attorneys sent a cease and desist letter to the Respondent on May 24, 2012. The Respondent sent a very brief reply email on the same day, saying that the Domain Name had been used for an email address for many years. He said that he had no intention of giving the Domain Name up, as doing so could cause his company substantial loss.
A subsequent offer by the Complainant to allow the Respondent six months’ use of the Domain Name (for sending emails) before transferring it to the Complainant, appears to have met with no reply.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is identical or confusingly similar to the Complainant’s POSISOFT mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following matters:
(i) The Respondent has never been authorized by the Complainant to register the Domain Name.
(ii) There is no evidence that the Respondent has used, or made demonstrable preparations to use, the Domain Name in connection with any bona fide offering of goods or services.
(iii) Use of a disputed domain name for email purposes does not constitute a bona fide offering of goods or services.
(iv) “Posisoft” is not a name by which the Respondent is or has ever been known.
(v) There appears to have been no public association of the Respondent with the name “Posisoft”.
(vi) The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The site is not a criticism site or fan site, does not contain commentary or parody, and does not refer to the Complainant’s Posisoft products at all. There is no need or justification for, or fairness in, using the Complainant’s made-up trademark in the Domain Name.
(vii) The Respondent could have explained any rights or legitimate interests he may have in respect of the Domain Name, when he received the Complainant’s attorney’s cease and desist letter. The fact that the Respondent offered no explanation at that time, clearly indicates that he has no rights or legitimate interests.
(viii) The Complainant’s POSISOFT mark has a substantial presence on the Internet, and its trademark registrations are readily found by searching various online registration records, including in the European Union. The Respondent was required by paragraph 2 of the Policy to make some good faith effort to avoid registering and using a domain name corresponding to a third party trademark in violation of the Policy, and there is no justification for the Respondent having failed to carry out a simple search of the Internet or of the various online trademark registries (which would have led the Respondent to the Complainant and its POSISOFT mark).
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following:
(i) Because the Respondent either knew of or should have known of the Complainant’s prior rights in the mark POSISOFT, the Respondent’s registration and use of the Domain Name “was clearly in bad faith” (citing Sembcorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092).
(ii) Because of the Respondent’s failure to comply with the provisions of the Policy requiring a good faith effort to explore third party rights before registering and using the Domain Name, the Respondent’s registration and use of the Domain Name was in bad faith (citing Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776).
(iii) The fact that the Respondent does not use the Domain Name to identify an active website is probative of bad faith.
The Respondent contends:
1. The Respondent has rights or legitimate interests in respect of the Domain Name. The name “Posisoft” was selected as an obvious, abbreviated domain name for the Respondent’s software consultancy company, Positive Software SPRL.
2. The Domain Name has been heavily used as a mail domain and as a Google apps for business domain identifier.
3. Internet Domains are not only web domains. The Respondent’s active use of the Domain Name for emails over the last 12 years could be easily proved.
4. Non-trivial trademark searching was a very difficult task 12 years ago.
6. Discussion and Findings
A. What the Complainant must prove under the Policy
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Complainant’s United States and Community Trademark registrations of the POSISOFT mark sufficiently establish “rights” in that mark for the purposes of paragraph 4(a)(i) of the Policy. As that mark is identical to the Domain Name (the “.com” suffix in the Domain Name is not taken into account in the comparison), the Complainant has made out its case on this part of the Complaint.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
In view of the conclusion the Panel has reached on the issue of bad faith registration and use (section 6D below), it is unnecessary for the Panel to make any findings under this heading.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
In a recent decision three-member panel decision, Side By Side, Inc. /dba/ Sidetrack v. Alexander Lerman, WIPO Case No. D2012-0771, the panel noted that:
“[…] for the preponderance of UDRP panels, proof of bad faith registration of a domain name is a crucial requirement”.
The panel in that case referred to the earlier three-member panel decisions in Poundland Limited v. Dealz.com, WIPO Case No. D2012-0918, and Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011, in holding that the consensus view since the Policy was implemented in 1999 has been that the conjunctive “and” [in paragraph 4(a)(iii) of the Policy] indicates that there must be bad faith both at the time of registration and subsequently.
The Panel proposes to apply that consensus approach in this case.
The first step, then, is that the Complainant must show that, when the Respondent registered the Domain Name on January 11, 2000, he did so in bad faith.
Except perhaps in the case of bulk registrations of domain names by professional domainers, UDRP panels have generally taken the view that, to establish bad faith registration of a disputed domain name, a complainant must show that the respondent was in some way “targeting” the complainant or its mark, or at the very least had the complainant or its mark in mind when selecting the domain name (see, for example, the decision of this Panel in Christian Dior Couture v. Paul Farley, WIPO Case No. D2008–0008, citing The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743).
In support of its bad faith registration contentions, the Complainant relies primarily on the following three matters:
1. The Complainant registered its POSISOFT mark in the European Union in 1996, nearly 4 years before the Domain Name was registered.
2. In registering the Domain Name the Respondent provided certain warranties to the Registrar. One of those warranties was that, to the Respondent’s knowledge, the registration of the Domain Name would not infringe upon or otherwise violate the rights of any third party. In registering the Domain Name, the Respondent accepted responsibility to determine whether the Domain Name registration would infringe or violate anyone else’s rights.1 In this case, the Complainant argues that the Respondent failed to discharge that responsibility. The Complainant points to the registration of its Community Trademark, and to the Respondent’s ability to locate the Complainant and its POSISOFT mark on the Internet if he had bothered to try to do so.
3. The Respondent has failed to establish a website at the Domain Name. Use of the Domain Name solely for email purposes is not, in the Complainant’s submission, sufficient to provide the Respondent with any legitimate interest in the Domain Name.
Referring first to the Complainant’s submission that the Respondent’s failure to establish a website at the Domain Name may be probative of bad faith, the Panel notes that, in certain circumstances, mere passive holding of a disputed domain name may be treated as bad faith registration and use of that domain name (see, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). However, all the circumstances of the particular case must be considered, and it will normally only be where the panel can see no conceivable legitimate purpose to which the respondent might put the domain name (and that bad faith directed in some way at the complainant is the only sensible explanation for its registration), that findings of bad faith registration and use by “passive holding” will be appropriate. Often an inference of bad faith will be reinforced by other factors being present, such as the respondent providing false contact details, or the complainant’s mark being particularly distinctive and/or well known (both factors were present in Telstra Corporation).
In this case, the Respondent has put forward an explanation for his choice of the Domain Name which, in the Panel’s view, does provide a plausible alternative explanation to bad faith targeting of the Complainant by the Respondent. From as early as 1993 he has been associated with a Belgian corporation called Positive Software SPRL, and he says that “posisoft” was considered to be a natural and convenient abbreviation for the name of that company. The Panel can see how someone might have come to that view.
Furthermore, the Complainant’s POSISOFT mark does not appear to be particularly well known, except perhaps by those engaged in the specialized field of coating thickness measuring gauges. There is no suggestion that the Respondent has had any connection with that highly specialised field of commerce, nor any reason to believe that he would have come across the Complainant’s Posisoft software in his daily activities in Belgium in the late 1990s. The Respondent is a software consultant, but at least as far as the evidence shows his activities appear to have been more concerned with software development in other areas (including the development of “open source” software designed to provide an alternative access method to webmail services such as Hotmail).
There is no suggestion that the Respondent has provided false contact information for the Domain Name. Nor are there any of the other typical indicia of cybersquatting, such as the disputed domain name being linked to a “pay-per-click” landing page and/or being offered for sale soon after registration. In short, there is nothing in the evidence to suggest that the Respondent intended to “ride on the back” of the Complainant’s goodwill in its POSISOFT mark in any way at all when he registered the Domain Name (twelve years is rather too long a period for the Panel to infer that the Respondent has been biding his time since the registration of the Domain Name, waiting for the right opportunity to sell the Domain Name to the Complainant at a profit). All the evidence shows is the email use of the Domain Name for purposes which appear to have been completely unrelated to the Complainant and its Posisoft product.
The Complainant submitted that mere email use of a disputed domain name is not enough to establish any right or legitimate interest in a disputed domain name. It referred in support to Freixenet SA v. Bernwald Averwald, WIPO Case No. D2003-0840. But in that case the only email address submitted in evidence by the Respondent was “firstname.lastname@example.org”, the default email address automatically generated in connection with every domain name registration for the purpose of corresponding with the registrar, and the panel held that the respondent had failed “to set up a webpage or to generate genuine e-mail traffic over the Domain Name”. The implication of the passage just quoted appears to be that if there had been “genuine” email traffic at the disputed domain name, the panel might not have made its finding of bad faith on the part of the respondent. In this case, there does appear to have been fairly extensive use of the email address “email@example.com”, and in an administrative proceeding such as this the Panel is not in a position to hold that that use has not been genuine.
Having regard to all of the matters just traversed, the Panel is of the view that this is not a case for a finding of Telstra Corporation – type bad faith by “passive holding” of the Domain Name. Looking at all the circumstances of the case, this Panel finds that there are just too many factors pointing to the probability that the Respondent was not targeting the Complainant at all when he registered the Domain Name.
The fact that the Complainant had held a registered POSISOFT Community Trademark for nearly four years before the Respondent registered the Domain Name has caused the Panel some concern. But most UDRP panels have declined to introduce the U.S. concept of constructive (deemed) notice per se into the UDRP. Some panels have been prepared to do so in certain circumstances, including where the respondent was located in the United States, the complainant had a federally registered United States trademark (registered before the respondent registered the disputed domain name), and there were other indicia of cybersquatting. Some panels have been less inclined to find registration in bad faith based solely on a claim of constructive notice, where the complainant’s trademark is less well known or corresponds to a common word or phrase.2
In this case, the Respondent is not a resident of the United States, and there do not appear to be any of the usual indicia of bad faith registration. And the Complainant’s mark appears to be towards the less well known end of the spectrum of distinctiveness of registered marks. For this Panel, those factors suggest that the existence of the Complainant’s registered Community Trademark should not be enough, on its own, to fix the Respondent with knowledge of the Complainant or its mark.
The Panel has considered the Sembcorp Industries Limited, supra case, cited by the Complainant as an example of a case where the panel applied a “should have known” [of the complainant’s mark] standard, rather than requiring proof of actual knowledge. But the panel in Sembcorp considered all the circumstances of the case before it, noting that the complainant’s mark was “highly distinctive”, and that the respondent’s explanation for his choice of the domain name was not reasonable. That is a different case from the one with which we are concerned, where the Respondent has offered a plausible reason for his choice of the Domain Name, and the Complainant’s mark seems a long way from the “highly distinctive” category.
The Panel was not particularly impressed with the opaque nature of the Respondent’s statement “Non-trivial trademark searching was a very difficult task 12 years ago”. The implication could be that the Respondent did not carry out any trademark search at all before registering the Domain Name, or that he did carry out a search but found nothing he considered relevant (and specifically, did not find the Complainant or its mark). The Panel notes that the Complainant’s POSISOFT registrations are quite narrowly confined, being limited to computer software specifically for “coating thickness measuring gauges”. Whatever may have been the reason for the apparently narrow specification, it does make it more difficult for the Panel to say with any certainty that even if the Respondent had come across the Complainant’s trademark registration, he might not have concluded (possibly mistakenly, but nevertheless in good faith) that his own field of endeavor was so far removed from the supply of specialist software for thickness gauges that there would be no risk of confusion or deception if he proceeded to register and use the Domain Name for his emails.
In the end, the Panel does not consider that the Respondent’s reference to “non-trivial trademark searching being difficult 12 years ago” provides any significant assistance to the Complainant on the issue of bad faith registration. The statement is as consistent with the Respondent not having carried out any trademark search at all (or having carried out an inadequate search), as it is with the Respondent being aware of the Complainant and its Posisoft product and electing to proceed to registration of the Domain Name for some bad faith purpose (which is still not apparent).
The Complainant refers to the Respondent’s obligations under paragraph 2 of the Policy, and the warranties which are deemed by that paragraph to have been given to the Registrar. It refers to the case of Aspen Holdings Inc., supra in support.
The Respondent may or may not have been in breach of obligations owed to the Registrar under paragraph 2 of the Policy – the Panel is not in a position to reach a firm conclusion on that matter, as it is not entirely clear that such use as the Respondent intended to make of the Domain Name would necessarily have violated the Complainant’s trademark or other rights. (The Complainant has not drawn to the Panel’s attention any issues it has had with the Respondent’s activities since the Complainant registered its POSISOFT mark in the United States in 1994 and in the European Union in 1996 – on the contrary, it was unaware of the Respondent’s existence until May 2012.) But even if the Respondent was in breach of his obligations to the Registrar under paragraph 2 of the Policy when he registered the Domain Name back in January 2011, that does not necessarily mean that he acted in bad faith in registering the Domain Name. Not all breaches of contract amount to acts of bad faith, and panels will typically look at all the circumstances of a case before making any finding of bad faith – in this Panel’s view it will seldom be appropriate to rely solely on breach of the warranties in paragraph 2 to found a bad faith finding. The Aspen Holdings case cited by the Complainant is a good example of that approach. The panel in that case did refer to the paragraph 2 warranties, but it also noted that the respondent’s website was populated by pay-per-click links that were related to the complainant’s field of activity, and that there were links to websites offering services that competed with those offered by the complainant. The panel in Aspen Holdings expressly inferred, from all of the facts, that the respondent intended to exploit and profit from the complainant’s trademark.
In the end, the Panel has come to the view that this case is not appropriate for expedited resolution in an administrative proceeding under the Policy. The existence of the Respondent’s company Positive Software SPRL, the plausibility of the Respondent’s explanation that the Domain Name was chosen as an abbreviation for that company name, and the apparent absence of any of the normal indicia of bad faith intent, all suggest that this is not the kind of case for which the Policy was designed, namely relatively straightforward cybersquatting situations. Of course, this Panel’s finding does not preclude the Complainant from pursuing other options it may have before competent national courts.
For all the foregoing reasons, the Complaint is denied.
Dated: August 23, 2012
1 These provisions are deemed by paragraph 2 of the Policy to have been incorporated in the registration agreement entered into between the Respondent and the Registrar.
2 See the Center’s document WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), at paragraph 3.4.