WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Mines Press, Inc. v. IPS of Boston / David DelConte

Case No. D2014-0652

1. The Parties

Complainant is The Mines Press, Inc. of Cortlandt Manor, New York, United States of America ("US"), represented by Lerner, David, Littenberg, Krumholz & Mentlik, LLP,US.

Respondent is IPS of Boston of Drums, Pennsylvania, US / David DelConte of Milton, Massachusetts, US, self-represented.

2. The Domain Name and Registrar

The disputed domain name <formcenter.com> (the "Domain Name") is registered with Network Solutions, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 18, 2014. On April 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 22, 2014, the Registrar 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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Response was filed with the Center on May 27, 2014.

The Center appointed Christopher Gibson as the sole panelist in this matter on June 11, 2014. 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

Complainant owns FormCenter, a division of The Mines Press, Inc., and has been involved in the business of printing forms since 1987. FormCenter currently provides preprinted checks, blank check stock, envelopes and MICR toner cartridges to ADP clients as well as related services. The FormCenter business has provided services authorized by ADP since 1992. Since that time, FormCenter has been ADP's authorized supplier of preprinted checks, blank check stock, envelopes and MICR toner cartridges to ADP clients across the country.

Complainant uses the domain name <form-center.com> which was registered on October 18, 2001, to promote its goods and services.

Respondent, IPS of BOSTON, is registered under Standard Industrial Classification code 7371 (Computer Programming Services) and has been creating software business forms related to check writing software requirements since 1980.

The Domain Name was registered by Respondent on May 23, 2013.

5. Parties' Contentions

A. Complainant

(i) Identical or Confusingly Similar: Complainant states that it (or its predecessor in interest) has continuously used its FORMCENTER trademarks in connection with its business of custom printed bank checks and customized business documents and check printing services since 1987, and on its website since around April 2003. Complainant has expended substantial time, money, and expense in connection with marketing, licensing, and advertising activities to cultivate the goodwill that it has developed with its customers. The FORMCENTER mark is prominently displayed in its advertising and on Complainant's website.

According to Complainant, both of its registered FORMCENTER trademarks listed below unintentionally expired. Complainant states that even though it does not presently have an active registration for FORMCENTER, since its previous registrations unintentionally lapsed, it has a new pending trademark application. Complainant applied for a new trademark in January 2014. That pending trademark application demonstrates Complainant's ongoing and continued use of its mark, as well as strong common law trademark rights and priority dating back to 1987:

- Registration no. 1,535,884, which was registered in the US on April 18, 1989, with a date of first use in commerce of December 28, 1987, has expired.

- Registration no. 1,515,377, which was registered in the US on December 6, 1988, with a date of first use in commerce of December 28, 1987, has expired.

- Application no. 86/166,182, which was filed on January 15, 2014.

Complainant contends that its FORMCENTER mark has become well known and is exclusively associated with Complainant's goodwill. Complainant's trademark registrations identified above, trademark application, common law trademark rights and its domain name <form-center.com> establish Complainant's exclusive right to use the FORMCENTER mark in connection with goods and services associated with custom printed bank checks and customized business documents and check printing services, goods for which the mark was previously registered and currently has an application pending.

Complainant contends that Respondent is a competitor and registered the Domain Name on May 23, 2013.

The Domain Name is identical to Complainant's trademark and virtually the same as Complainant's domain name. Even though Complainant's domain name uses a dash between the two words "form" and "center", this difference is insignificant and does not substantially differentiate the two domain names. As such, Complainant's customers and potential customers cannot recognize any difference between the Domain Name and Complainant's FORMCENTER trademark.

Complainant states that its customers have a likelihood of believing that Complainant is the owner and operator of the Domain Name. In fact, Complainant is not associated with and offers no services or goods through the Domain Name. Complainant has submitted evidence from January 2014 to show that, on visiting the Domain Name, visitors were redirected to <ipsboston.com>, which is Respondent's domain name, and shown preprinted standard stock checks and envelops for use in connection with ADP. Internet visitors are also shown links to ADP printing supplies and toner cartridges. Because the same or similar goods and services were offered through the Domain Name as are promoted through Complainant's domain name, there is a likelihood that Complainant's customers were confused by the Domain Name and whether it is in fact associated with Complainant. Thus, because the Domain Name is identical on its face to Complainant's trademark, it is confusingly similar and likely to cause confusion to customers.

Complainant argues that by using its trademark for the same or similar goods promoted by Complainant, Respondent sought to prey on Complainant's fame and goodwill. When Respondent used the Domain Name, which that is identical to Complainant's trademarks, for purposes of promoting the same goods and services, it used Complainant's trademark without permission and in an infringing manner.

(ii) Rights or Legitimate Interests: Complainant states that prior to Respondent's acquisition of the Domain Name, it was for sale for many years but was not being used by the previous owner. It was not used to promote or sell any competitive goods or services such as in connection with checks, envelopes, toner cartridges and related services for ADP clients. According to Complainant, the previous owner was asking for an exorbitant amount of money for rights to the Domain Name. As such, because the Domain Name was not being used for competing goods or services, Complainant instead chose <form-center.com> for its domain name.

Complainant has submitted evidence to show that Respondent stated in correspondence that it was aware of Complainant's interest in the Domain Name prior to acquiring it. Allegedly based on that information, Respondent acquired the Domain Name and redirected traffic from the Domain Name to <ipsboston.com>, which is Respondent's domain name. Complainant argues this is a direct attempt to capitalize on the goodwill established by Complainant's trademark. On February 5, 2014, Complainant's representative contacted Respondent, via letter, with regard to its unauthorized use of the Domain Name. Respondent responded with a request for USD 35,000 in exchange for the Domain Name. Complainant and Respondent also negotiated a possible acquisition by Complainant of Respondent's business related to ADP blank and pre-printed material, which would have included the Domain Name. As part of those negotiations, Respondent agreed to stop redirecting traffic from the Domain Name to <ipsboston.com>. As such, Respondent currently does not use the Domain Name to direct traffic to its website at <ipsboston.com>.

Complainant alleges that negotiations for a possible acquisition proved unsuccessful, despite its attempt to negotiate in good faith with Respondent for the acquisition of the Domain Name. Respondent's offer remained at USD 35,000. Upon visiting the website linked to the Domain Name, Internet visitors are currently advised that "This Domain Name is available for purchase. Please email salesteam@ipsboston.com." Such a refusal is further evidence that Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Respondent sells competing products to those of Complainant, which is further evidence that Respondent was not and is not making a legitimate noncommercial or fair use of the Domain Name.

(iii) Registered and Used in Bad Faith: Complainant asserts that the Domain Name was registered and used in bad faith by a direct competitor of Complainant. Through its registration and use of the Domain Name, Respondent sought to intentionally attract, for commercial gain, clients and prospective clients of Complainant to Respondent's <ipsboston.com> website. The Domain Name is identical to Complainant's trademark and confusingly similar to Complainant's <form-center.com> domain name. In that regard, Respondent's use of the Domain Name created a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website and the goods sold on Respondent's website.

Respondent's Domain Name served to confuse consumers and attempted to draw Internet users to Respondent's website, thinking it is associated with Complainant's website. The Domain Name was registered and being used in bad faith by Respondent. Moreover, even though Respondent no longer redirects visitors to its website using the Domain Name, Respondent is improperly holding the registration to the Domain Name in bad faith. Despite offering a price not less than what Respondent paid for the Domain Name, Respondent refuses to transfer the Domain Name to Complainant. Instead, Respondent is attempting to cash in for a big pay day and extract money from Complainant in exchange for transferring the Domain Name. This is an improper use of the Domain Name and demonstrates bad faith. Respondent has no rights to the FORMCENTER mark for the goods and services it provides yet continues in bad faith by maintaining the registration for the Domain Name.

B. Respondent

Respondent states that it has been in the business of creating software business forms related to check writing and selling electronic and hardcopy payroll forms to ADP clients long before Complainant was printing checks and selling envelopes through Complainant's website at "www.form-center.com". Respondent alleges that it is the original software programming company for the print engine and form guidelines that ADP used when rolling out ADP's first accounting software in the early 1980's. Respondent's Checks on Demand software program is currently installed and being used in thousands of businesses throughout the US and Canada, with the majority of the customer base using Respondent's Form Editor module to customize the client's checks, claims and invoices. Respondent's Form Editor product changes form design on the fly without the customer having to call in for support.

Respondent states that its webpage featuring Form Editor features has been online for 20 years without change. Its Forms Editor positions and aligns the logos, signature lines, comments, starting check numbering sequence and MICR line. The entire design of the form is done within Respondent's software, and Respondent also produces custom signatures on the checks with its MAKE LOGO software. Respondent has been creating forms in color or black and white for over 30 years.

By contrast, Respondent asserts that Complainant's website at "www.form-center.com" sells blank and pre-printed check stock with some added information using MICR toner with software designed by a company like Respondent. Complainant's site has no reference to form design and creation in the same manner as Respondent's software.

Respondent states that Complainant also tries to imply that it is ADP's only authorized supplier. However, Respondent has submitted evidence of ADP contacting Respondent so that it would reach out to a new client to fill a check stock order. Moreover, Respondent supplies pre-printed check stock and envelopes to over 3000 ADP clients using ADP applications. Standard Registrar is ADP's biggest supplier, not Complainant.

Respondent states that as a software company, it also purchases domain names either for redirecting to its business site or for resale. Respondent claims that after contacting the previous owner of the Domain Name, Respondent was told that the Domain Name had been available for sale for many years with no interest, even from Complainant. Respondent asks if the Domain Name was so important to Complainant, why did it not try to acquire the Domain Name during all those years? Respondent submitted evidence to show that it negotiated a price of USD 7500 for the Domain Name and redirected it to Respondent's website, since Respondent creates custom forms and has been doing so since 1980.

Respondent states that approximately one year after it registered the Domain Name, it received a communication from Complainant's attorneys. Respondent also notes that while it legally purchased the Domain Name one year ago, Complainant's latest trademark application for FORMCENTER is dated more recently – January 15, 2014. According to Respondent, this is when Complainant decided to make an attempt to highjack the Domain Name that Respondent asserts it legally purchased earlier. As further evidence of Complainant's intentions, Respondent asserts that the Complaint falsely characterizes the negotiations between the parties. The evidence shows that Respondent was willing to negotiate but Complainant "wanted to take and not buy". Respondent states it was not going to sell the Domain Name for less than the amount that it had spent on the Domain Name. Respondent has stated to Complainant that if Complainant wants to buy the Domain Name, Respondent is willing to sell if for fair market value.

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel must determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that it has owned, promoted and used the FORMCENTER trademark in commerce for many years in connection with its business. Despite the lapse of its two registered trademarks, and in view of the longstanding use of its FORMCENTER mark and the recent application to the United States Patent and Trademark Office for a new registration, the panel finds that Complainant has established unregistered or common law rights in its FORMCENTER mark.

The Panel finds that the Domain Name is identical to Complainant's FORMCENTER mark. The Panel observes that the only difference between Complainant's trademark and the Domain Name is the generic Top-Level Domain (i.e., ".com"). However, it is generally accepted that the addition of the gTLD in a domain name may be disregarded under the confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.

Accordingly, the Panel concludes that the Domain Name is identical to Complainant's FORMCENTER trademark. Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

In this case, Complainant has established a prima facie case. Complainant has shown that Respondent was aware of Complainant and its FORMCENTER mark when it registered the Domain Name. Respondent has also acknowledged that this is the case, stating that it bought the Domain Name from a third party only after the seller indicated to Respondent that "nobody, including form‐center.com [Complainant], was interested in buying it during all the time he owned it." Respondent is a competitor of Complainant and is not known by the Domain Name. Instead, Respondent's name is IPS of Boston. Complainant has not authorized or otherwise granted permission to Respondent to use Complainant's FORMCENTER mark. Once Respondent registered the Domain Name the Domain Name was redirected to Respondent's website at "www.ipsboston.com", where Respondent sells products and services that compete directly or indirectly with Complainant's products and services. After Complainant contacted Respondent concerning the Domain Name, Respondent demanded that Complainant pay an amount in excess of its out-of-pocket costs. Finally, the Domain Name now presents a page listing that it is for sale. All of these circumstances support Complainant's prima facie showing that Respondent has not established any rights or legitimate interests in the Domain Name.

In response, Respondent has stated several points. Respondent indicates that it had inquired with the seller of the Domain Name as to whether anyone, including Complainant, had shown interest in the Domain Name before Respondent "legally" purchased it. Respondent states that it is a software company and as such, it purchases domain names either for redirecting to its business site or for resale. Respondent has also maintained that it is the original software programming company for the print engine and form guidelines that ADP has used when rolling out ADP's first accounting software. Moreover, Respondent has a product called Form Editor that is used in conjunction with its services.

The Panel finds that none of these circumstance support any rights or legitimate interests in the Domain Name on the part of Respondent. The fact that Respondent, under its name IPS of Boston, has been providing software products and services for many years in support of ADP's payroll services does not establish any right or interest in the Domain Name, which is identical to Complainant's FORMCENTER trademark. Nor does the name of one of its software products, Form Editor, establish any such rights or interests. A simple Google search of the terms "form center" by Respondent would have returned Complainant's website, where its FORMCENTER brand and trademark is prominently displayed. Moreover, Respondent has acknowledged that it was aware of Complainant and its name prior to registering the Domain Name. Thus, this is not a case in which a third party registered the Domain Name merely for its descriptive value. Instead, Respondent was aware that the name of its business competitor, FormCenter, was virtually identical to the Domain Name it sought to purchase. In this regard, Respondent is responsible for the legal representations that it made as part of the registration agreement for the Domain Name. Under the UDRP, paragraph 2, Respondent represented and warranted that "to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" and "[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else's rights." Further, Network Solutions' registration agreement provides similarly in paragraph 11 (Representations and Warranties) that Respondent agrees and warrants that neither Respondent's registration nor use of the Domain Name "will directly or indirectly infringe the legal rights of a third party."

Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate Respondent registered and is using the Domain Names in bad faith. Complainant claims that Respondent is a direct competitor who registered the Domain Name, which is identical to Complainant's trademark, in bad faith in an attempt to confuse consumers and draw Internet users to Respondent's website, thinking it is associated with Complainant. Further, Complainant alleges that Respondent has demanded an exorbitant sum for purchase of the Domain Name.

The record indicates that Respondent was aware of Complainant and its name when it registered the Domain Name. Further, Respondent initially redirected the Domain Name to Respondent's website at "www.ipsboston.com" until Respondent was contacted by Complainant's lawyers. After that point, Respondent insisted in negotiations with Complainant on a price for the Domain Name that was in excess of Respondent's out-of-pocket costs and then listed it for sale.

The Panel determines that, in view of all of the circumstances of this case, Respondent registered and has used the Domain Name in bad faith. Respondent might have mistakenly thought it was entitled to register the Domain Name, which was identical to the name and trademark of its competitor. However, Respondent's possible error does not justify targeting a competitor's name and mark, then using the Domain Name to redirect web traffic to Respondent's own site, and then seek an inflated sum for sale of the Domain Name to Complainant. The Panel does not find persuasive Respondent's explanation that one of the reasons for why it chose the Domain Name <formcenter.com> was because it has a software product named Form Editor. Further, even assuming that Respondent fairly believed its actions with respect to the Domain Name were proper and permissible, they nevertheless constituted bad faith registration and use insofar as the Panel is persuaded that Respondent was targeting Complainant as it registered the Domain Name. As noted above, Respondent would have benefitted from reviewing closely the representations and warranties in the registration agreement for the Domain Name.

Accordingly, the Panel finds that Complainant has satisfied the third element of the Policy.

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 Domain Name <formcenter.com> be transferred to Complainant.

Christopher Gibson
Sole Panelist
Date: July 7, 2014