WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Softronic AB v. Privacy Protect / Frank Lancaster / Isaac Goldstein
Case No. D2013-0637
1. The Parties
The Complainant is Softronic AB of Stockholm, Sweden, represented by Zacco Sweden AB, Sweden.
The Respondent is Privacy Protect of Shanghai, China; Frank Lancaster / Isaac Goldstein of Chesterfield, Michigan, United States of America, represented per se.
2. The Domain Name and Registrar
The disputed domain name <softronic.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co. Ltd dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2013. On April 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 15, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 19, 2013.
The Center verified that the Complaint together with the amended 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 April 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2013. The initial Response was filed with the Center on May 1, 2013. In response to the Center’s email communication of May 3, 2013, the amended Response was filed with the Center on May 3, 2013. The Center sent several emails to the Respondent requesting it to confirm its selection of the panel type. The Center did not hear from the Respondent on this matter by the specified Response due date.
On May 7, 2013, the Center received the Supplemental Filing from the Complainant by email. On May 8, 2013, the Center acknowledged receipt of this Supplemental Filing and indicated it will be in the sole discretion of the Panel to determine whether to consider and/or admit the Supplemental Filing in rendering its decision, and whether to order further procedural steps, if any.
On May 8, 2013 the Center received a Supplemental Filing from the Respondent and responded similarly in relation to this filing and on May 10, 2013, the Center wrote again seeking confirmation of the Respondent’s panel election and confirming that it had used the emails domains[…]@isaacgoldstein.com and […]email@example.com as they had been noted in the Respondent’s most recent email communication and in its email communication of May 3, 2013.
The Center appointed Alistair Payne as the sole panelist in this matter on May 17, 2013. 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 founded in 1984 and is a publicly listed IT and management consulting company on the NASDAQ OMX exchange in Sweden. It owns a combined word and device Swedish trade mark registration featuring the word SOFTRONIC under trade mark number 204/0443 dating from 2005. It also has a pending Community Trade Mark Application for the SOFTRONIC word mark application dating from December 2012.
The Complainant initially registered the disputed domain name on December 15, 1998 and used it after that date to resolve to its main website together with a variety of other domain names, including <softronic.se>, <softronic.info>, <softronic.biz> , <softronic.ee> and <softronic.nu>. The Complainant omitted to renew the disputed domain name and it was de-activated by the registrar, Network Solutions on December 17, 2012 and sold at auction and subsequently transferred to another registrant on January 20, 2013. The disputed domain name was transferred to the current Registrar on February 12, 2013 using a privacy protection service but was subsequently identified by the Registrar in the course of these proceedings as being the Respondent.
5. Parties’ Contentions
The Complainant asserts that it owns registered trade mark rights in the SOFTRONIC Swedish registration as noted above. Although this mark is a figurative mark the Complainant argues that by far the dominant element is the word mark SOFTRONIC and that the figurative elements are not overall distinctive by comparison. The Complainant asserts that the disputed domain name is either identical or confusingly similar to this trade mark.
As far as rights or legitimate interests are concerned, the Complainant says that it has not authorized the Respondent to use its mark and the Respondent is neither making a use of the mark in connection with bona fide goods or services, nor is it making a legitimate or fair use of the disputed domain name. The Complainant submits that in view of the Complainant’s use of the disputed domain name since 1998 and of its Community Trade Mark application the Respondent must have been aware of the Complainant’s mark when he acquired the disputed domain name. The fact that it immediately chose to register the disputed domain name and to have it resolve to a pay per click (PPC) landing site featuring identical or similar products or services to the Complainant’s, is only indicative of an intention to take advantage of the Complainant’s goodwill and cannot constitute a legitimate interest according to the Complainant.
In short the Complainant submits that the circumstances, in which the Respondent registered the disputed domain name, as described above, were opportunistic and only made possible by the inadvertent lapsing of the Complainant’s registration of the disputed domain name. The Complainant says that its database searches indicate that, after expiry of the Complainant’s registration, the disputed domain name was first acquired by one Isaac Goldstein and appears to have been subsequently transferred to a privacy service before appearing in the Respondent’s name. The Complainant notes that the “Goldstein” name appears in email addresses used in correspondence between the Respondent and the Center and that Isaac Goldstein has been the subject of numerous past UDRP cases which shows a pattern of registering domain names in order to seek to prevent the owner of a specific trade mark or service mark from reflecting it in a domain name. The Complainant suggests that based on the use in bad faith of the disputed domain name to resolve to a PPC parking site, the only inference that can be drawn from these two transactions is that the disputed domain name generates considerable traffic and that this is attributable to the Complainant’s long standing prior use of the disputed domain name.
The Complainant submits that the Respondent’s use of the disputed domain name shows its intention to disrupt the Complainant’s business or to purposefully attract Internet users for commercial gain to his website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of its websites. The Respondent’s use of a privacy protection service and the fact that he has avoided communication with the Complainant also constitutes registration and use in bad faith.
The Respondent submits that the term “softronic” is broad and non-descriptive and could be applied to any product comprising software and electronics. It also notes that the Complainant does not own various other domain names containing the “softronic” term, for example, <softronic.net>, <softronics.com> or <softronix.com>. The Respondent asserts that a Google search for “softronic” reveals 788,000 results and that the Complainant’s website does not appear on the first three pages of these searches.
The Respondent submits that he registered the disputed domain name for the purposes of creating a device based on software and electronics that would identify abnormalities in the gum line that could otherwise lead to infections causing sepsis or death. He says that no one else is using this term or mark to his knowledge in this particular field and that he considers his prospective use as being “fair”.
In a Supplemental Filing of May 8, 2013, the Respondent appears to deny that email addresses containing the “Goldstein” name have anything to do with him and requests the Center to alter its records accordingly and notes that he does not understand why the Complainant is also using these addresses.
6. Discussion and Finding
On this occasion the Panel exercises its discretion under paragraph 10 and 12 of the Rules to accept the supplemental filings of both parties into the record as they relate to new issues or evidence, in particular concerning the identity or connections of the Respondent which were not addressed in the earlier pleadings.
A. Identical or Confusingly Similar
The Complainant owns a Swedish trade mark registration as noted above which is a combined logo and word mark including the word SOFTRONIC. The word SOFTRONIC is by far the most outstanding and dominant element of the combined mark and the overall impression left by the mark is of the term SOFTRONIC. In this case the device elements of the mark are insignificant by comparison and as a consequence the Panel finds that the undeniably dominant element of the Complainant’s trade mark is the word mark SOFTRONIC and that the disputed domain name is confusingly similar to this trade mark.
As a result the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant says that it has not authorised the Respondent to use its mark and that the Respondent is neither making a use of the mark in connection with bona fide goods or services, nor is it making a legitimate or fair use of the disputed domain name. The Complainant submits that in view of the Complainant’s prior use of the disputed domain name, the substantial presence of its website and mark on the Internet of which the Respondent should have been aware and of the Respondent’s opportunistic registration and subsequent use of the disputed domain name for a PPC landing page, that the Respondent’s use is not legitimate.
The Respondent rebuts the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name by submitting that “softronic” is a generic term that could be used by anyone and that he fairly chose it for the purposes of a medical device product incorporating software and electronics.
The Panel is not persuaded by the Respondent’s arguments. The term “softronic” appears to the Panel to be a coined term, based on the words electronics and software which is not commonly used in the English language. Although it may be in common use to the extent that an Internet based search for the term garners numerous examples of usage this does not necessarily mean that it is generic. The Respondent’s explanation for its choice of the disputed domain name is not convincing, more particularly without further detail or any supporting evidence of prospective use or preparations for use in relation to its medical device.
In all the circumstances and as further noted below the Panel finds that on balance the Respondent has not rebutted the prima facie case made out by the Complainant and accordingly the Complaint succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was acquired by the Respondent at auction following the expiry and inadvertent failure by the Complainant to renew a domain name that it had been actively using since 1998. On its own such an acquisition is not of course necessarily made in bad faith. It is rather the other circumstances surrounding the Respondent’s conduct on acquisition, subsequent use and in the course of this proceeding that are in the Panel’s view indicative of bad faith in this case.
The disputed domain name is being used by the Respondent to resolve to what appears to be a PPC parking page containing links to similar products or services to the Complainant’s. Although the Respondent says that he registered the disputed domain name for the purposes of marketing a medical device there is nothing submitted in his response to support this assertion, for example, evidence that he has commenced preparations for such a business. Nor is there any explanation as to why the domain name was or continues to be parked to a page featuring links to similar products or services to those of the Complainant.
Under paragraph 4(b)(i) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.” The evidence establishes that the Respondent is using the disputed domain name in connection with a PPC site offering commercial links to third party websites
The Complainant asserts that one Isaac Goldstein acquired the disputed domain name at auction. The same Mr. Goldstein appears to have a history of registering domain names in bad faith and has been involved in numerous UDRP disputes. The disputed domain name then seems to have been transferred to another registrar so that at the time that the Complainant first filed its Complaint it appeared to be subject to a privacy service with the real owner’s name hidden from view. Subsequently it became apparent that the Respondent owned the disputed domain name.
The Respondent expressly denies any knowledge of Mr. Goldstein. Following the suggestion by the Complainant that he was in fact Mr. Goldstein, or was affiliated with Mr. Goldstein, the Respondent wrote to the Center on May 8, 2013 asking why it continued to send communications to email addresses including the Goldstein name. The Center responded that the emails […]firstname.lastname@example.org and […]email@example.com had been used in the Respondent’s most recent email communication and also in his email communication of May 3, 2013. The Panel has checked these emails and notes the existence of both email addresses in either email from the Respondent. The logical inference drawn by the Panel from this is that, in spite of the Respondent’s denial of all knowledge, the Respondent is either Isaac Goldstein, or is affiliated with him in some way.
In the Panel’s view these circumstances support the Complainant’s submission that the Respondent’s registration of the disputed domain name was opportunistic and was intended to benefit Mr. Goldstein and/or the Respondent. In the cases noted above, Mr. Goldstein has a history of seeking to taking opportunistic advantage of established trade marks or domain names in nine WIPO UDRP cases as submitted by the Complainant, at least one of which involves the use of the same privacy service and Registrar as in this case: The American Automobile Association, Inc. v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069. All these circumstances seem to the Panel to be more than co-incidental and this pattern of repeated bad faith conduct further supports an inference that the Respondent has sought to prevent the Complainant from re-registering the disputed domain name registration in terms of paragraph 4 (b)(ii) of the Policy, by taking advantage of the Complainant’s omission to renew its registration.
Overall the Panel finds that the circumstances of registration, of change of registrant and use of a privacy service, the strong likelihood that the Respondent either is Mr. Goldstein, or is affiliated with Mr. Goldstein, Mr. Goldstein’s past history of bad faith conduct and the fact that the disputed domain name resolves to a PPC page featuring links to similar products or services to the Complainant’s and that the Respondent’s failure to explain this adequately or provide proper evidence of its intentions for use of the disputed domain name, all point on the balance of probabilities to registration and use of the disputed domain name in bad faith.
Accordingly the Panel finds that the Complaint succeeds under the third element of the Policy.
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 <softronic.com> be transferred to the Complainant.
Date: May 31, 2013