WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Downstream Technologies, LLC v. Bartels System GmbH
Case No. D2003-0088
1. The Parties
The Complainant is Downstream Technologies, LLC of Bolton, Massachusetts, United States of America, represented by Iandiorio & Teska of United States of America ("the Complainant").
The Respondent is Bartels System GmbH, C/O Mr. Oliver Bartels of Erding, Germany ("the Respondent").
2. The Domain Name and Registrar
The disputed domain name <cam350.com> is registered with Network Solutions, Inc. Registrar ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 6, 2003. On February 7, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue ("the domain name"). On February 12, 2003, 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 administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 February 13, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 5, 2003. The Response was filed with the Center on March 3, 2003.
The Center appointed Tony Willoughby, Nels T. Lippert and Stefan Abel as Panelists in this matter and notified the parties of the appointment on March 27, 2003. The Panel finds that it was properly constituted. Each member of 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.
On April 2, 2003, the Complainant sought permission to file a supplemental submission. On April 4, 2003, the Panel notified the Center that it would not accept the submission unless the Complainant came forward with good reason for the Panel departing from the normal procedure. On April 7, 2003, the Complainantís representative informed the Center that the Response contained false evidence and that the Respondent had offered to sell the domain name to the Complainant. Accordingly, on April 8, 2003, the Panel issued the following direction: "The Panel has seen Mr. Colemanís email of April 7, 2003. It is by no means certain that it will admit the document in question, but in light of Mr Colemanís assertions of false evidence from the Respondent and the existence of an exceptional reason meriting departure from the normal procedure, the Panel wishes to see the document. In the event that the Panel thinks it appropriate to admit the document, it will give the Respondent an opportunity to respond."
The Panel was duly forwarded the Complainantís further submission and has read it, but declines to admit it. There is nothing of significance in it, which was not apparent to the Panel from the original filings. The allegation of an offer to sell is not of itself of any assistance to the Complainant unless it is indicative of the Respondentís state of mind at time of registration of the domain name. As indicated below, the Panel is clear as to why the Respondent registered the domain name and it was not so that the Respondent could sell it to the Complainant.
4. Factual Background
From at least October 1993 to March 1995, the term CAM350 was being used by a company named CAD Solutions Inc in relation to a software product. The headquarters of CAD Solutions Inc was in San Jose, California. One of the companies using/distributing CAD Solutions Incís CAM350 software was PADS Software Inc, based in Marlboro, Massachusetts. Product pricing documentation of PADS Software Inc incorporating references to the CAM350 product are annexed to the Complaint. The documentation is dated July 18, 1994, and September 1, 1999. The latter of those two documents lists "CAM350 fabrication modules" under a heading "advanced CAM technologies configuration matrix."
On November 10, 2000, Innoveda Inc (formerly Advanced Cam Technologies) of Los Gatos, California, appointed Mahle GmbH of Kirchheim, Germany, a non-exclusive "Authorized Reseller" in respect of Innoveda Inc software products. The licensed products covered by the Agreement include CAM350. The Agreement includes a clause whereby Innoveda warrants that it is the owner of all trademarks included on the products licensed to the re-seller.
On January 5, 2001, Bartels Systems GmbH of Erding, Germany, a company engaged in the electronic design automation business ("the Respondent"), registered the domain name.
On February 1, 2001, Innoveda Inc sent a letter to Mahle GmbH terminating the Agreement referred to above. The letterhead features the legend "PADS is now Innoveda" and the letter commences "Innoveda, Inc., formerly Advanced CAM Technologies (ACT) and PADS Software (PADS)."
On September 11, 2002, the Complainantís representative emailed the Respondent asserting that the Complainant "is the exclusive licensee of the copyright in and to the CAM350T product and also the exclusive licensee of the well known trade mark CAM350T." The letter goes on to point out that the Respondentís website is promoting the sale of a competitive product to the CAM350T. The letter seeks transfer of the domain name to the Complainant.
On December 28, 2001, Innoveda Inc, then of Marlboro, Massachusetts granted to Downstream Technologies Inc, then of Belmont, Massachusetts ("the Complainant") a perpetual worldwide and non-exclusive license in respect of Innovedaís software. This agreement includes a trade mark licence covering, amongst others, CAM350.
On October 19, 2002, the Complainant acquired by way of a Trade Mark Quit Claim Deed all Innoveda Incís "right title and interest" in, inter alia, the trade mark CAM350. On December 17, 2002, the Complainant filed an application at the US PTO for registration of CAM350 as a trademark for computer aided manufacturing software programmes.
The Respondent responds the same day. It indicates that if the Complainant can produce a trade mark registration certificate for CAM350, it will transfer the domain name. The core of the Response is as follows:
"Our ISP department has registered the name <cam350.com> for our own EDA department. Currently the domain is supplied to Mahle GmbH, which is rightfull, as "cam350.com" is not known to us a registered trademark, company name or name of some individual. However you may have recognized that we have CAM and post-processing tools within the EDA tools and we could think of using this as a product name. However we are also interested to differentiate our products from other products, especially low level products, thus nothing has been decided and we need to do a market survey. But from the last survey we did the name was not allocated in any trademark registers. Thus we registered the name."
On February 27, 2003 (following the filing of the Complaint), the Complainantís representative sent a facsimile message to the Respondent indicating that the Complainant would not appoint Mahle GmbH as a distributor and would not pay $4,000 for the domain name, these purporting to be terms offered to the Complainant by the Respondent in the course of the preceding discussion. The facsimile message went on to demand transfer of the domain name without any money changing hands.
5. Partiesí Contentions
The Complainant contends that the domain name is identical or confusingly similar to the Complainantís trademark CAM350.
The Complainant refers to the history (as related above) to illustrate how it came to own rights in the trade mark CAM350 and produces a promotional document dated November 26, 2002, headed "Who is using CAM350?" The list of users includes a large number of world famous names, including Honeywell, Motorola, Intel, Nokia, IBM, 3Com, Siemens etc.
The Complainant produces evidence to show how it is using CAM350. On CD Roms and in its advertising the name CAM350 is generally accompanied by the letters "TM." It also produces printups from its website at "www.downstreamtech" which also makes reference to the CAM350 product.
The Complainant produces its profit and loss account for the 2002 calendar year showing "total income from sales" at $2,555,095.85.
The Complainant claims unregistered trademark rights in CAM350 based upon the goodwill and reputation associated with the mark and resulting from the use of the mark by the Complainant and its predecessors. The Complainant claims that the mark has acquired secondary meaning.
The Complainant asserts that the Respondent is using the domain name in a confusing manner in that the domain name is connected to a website which is promoting a competing product to the Complainantís product.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant points out that the Respondent is not known as CAM350 and is not associated with the Complainant. Moreover, so the Complainant asserts, the Respondentís use of the domain name is not fair and is not in relation to a bona fide business, the domain name being connected to a website selling the competing product.
The Complainant asserts that the Respondent registered the domain name in bad faith and is using it in bad faith. The Complainant categorizes what the Respondent has done as "a classic bait and switch scheme." The domain name featuring the Complainantís product name is the bait and when the visitor to the site gets there, he/she finds the Respondentís competing product.
The Complainant asserts that the Respondent "has intentionally attempted to attract, for financial gain, internet users to Respondents website at "cam350.com" by creating confusion with Complainant Downstreamís mark as to the source, sponsorship, affiliation, or endorsement of that site."
The Respondent denies that the Complainant has trade mark rights in the mark CAM350. There are no trade mark registrations for the mark.
The Respondent asserts that 99% of the population of Germany and the United States will never have heard of the mark CAM350. The Respondent questions whether the name is registrable at all, given the fact that CAM is a well known acronym for "Computer Aided Manufacturing."
The Respondent further contends that the Complainant has not shown that it is the legal successor to Innoveda.
The Respondent contends that it does have rights or legitimate interests in respect of the domain name. The Respondent contends that it registered the domain name in January 2001, for the joint use of the Respondent and Mahle GmbH, Mahle GmbH being at that time a licensee of Innoveda Inc for the CAM350 product. The Respondent contends that it has been using the term CAM since 1998, long before Innoveda existed.
It states "the website was and is used:
- to present the Innoveda product CAM350 with a website
- to establish general CAM and Post-CAM customer communications for example under the name firstname.lastname@example.org"
The Respondent asserts that the termination of the Mahle Licence was in violation of United States and German law. It contends that Mahle GmbH did not contest the termination letter because there was doubt as to "which of the different tools sold by different companies under the name Ącam350" would survive" and Mahle was also concerned as to the cost of US litigation and particularly against companies which might shortly cease to exist. Innoveda was rumoured to be in financial difficulties.
At Innovedaís request, the name CAM350 was removed from the website but the domain name is still used for email addresses for customersí communications. "Mahle GmbH is receiving official licences [sic] of cam350 from re-sellers of the Complainant" and the Respondent goes on "[h]owever it should be again state that the domain <cam350.com> is used for general Post-CAM communications and is used registered by Bartels. The distributor contract of Mahle with the Innoveda just shows that the use of the domain was in anycase not abusive."
The Respondent points to other domain names such as <cam350.de> and <cam-350.com> which are used by other parties. The latter is used by a dealer, Terry Fox, who, the Respondent contends, sells other products as well as the CAM350.
The Respondent contends that the evidence supports the position that there are a variety of CAM350 products not associated with the Complainant and that there are a number of CAM350 domain names available (e.g. <cam350.info>) which the Complainant would have registered if the Complainant was seriously interested in the name.
The Respondent refers to the inter party correspondence referred to above and contends that the Complainant has no serious interest in achieving a fair agreement. The Respondent also queries whether the Complainant is operating a genuine business. The Respondent had difficulty making contact with the Complainant by telephone, failing to get beyond a voice mail box.
The Respondent contends that the behaviour of the Complainant has been such that the Respondent is left with the impression that the only reason that the Complainant wants the domain name is to get access to the confidential email communications between the Respondent and Mahle and their customers.
6. Discussion and Findings
A. Identical or Confusingly Similar
The domain name, featuring as it does the mark CAM350 and nothing more (apart from the generic domain suffix) is identical to the mark CAM350. The question is: does the Complainant have rights in the mark CAM350?
While the Panel is satisfied that the Complainant is the successor in title to Innoveda, there is no trade mark registration of CAM350 and the Complaint contains very little in the way of hard evidence to suggest the existence of unregistered rights in the mark. However, the Panel notes that the Respondentís justification for registering the domain name in the first place was that Mahle GmbH had the benefit of a licence from Innoveda to use the trade mark CAM350, so it is difficult for the Respondent to argue that it is not a trade mark.
On balance, the Panel is satisfied that CAM350 is a trademark and that it is a trademark owned by the Complainant.
Accordingly, the Panel finds that the domain name is identical to a trademark in which the Complainant has rights.
B. Respondentís Rights and Legitimate Interests
Whether or not the Respondent has rights or legitimate interests in respect of the domain name is academic given the Panelís finding in relation to the bad faith claim.
C. Registered and Used in Bad Faith
There can be no question but that if Mahle Gmbh had been the Respondent, the Complaint would have had to have failed. At the time of registration of the domain name Mahle Gmbh had the benefit of a licence entitling it to use the trademark. Whether or not that licence was sufficient in law to entitle the Mahle Gmbh to use the trade mark as part of the domain name, it is certainly enough (in the absence of any other evidence on the topic) to negative bad faith on the part of Mahle Gmbh. Mahle Gmbh was never a cybersquatter.
But the Respondent is not Mahle Gmbh. Why should the Respondent derive any benefit from Mahle Gmbhís immunity?
This question has caused the Panel some difficulty and not least because the Respondent has provided very little in the way of evidence to demonstrate the connection between Mahle Gmbh and the Respondent. Nonetheless, the Panel notes that the home page of the original website at "www.cam350.com" (accessible via webarchive) featured a legend identifying Annette Mahle as the author and elsewhere on the site was a Mahle Gmbh copyright notice.
The Panel is reasonably satisfied that when the Respondent registered the domain name it was acting in concert with and with the approval of the licensee of the trademark. At that time neither the Respondent nor the licensee thought that they were acting outside the scope of the licence. There was no bad faith intent of any kind.
Accordingly, the Complainant has failed to prove to the satisfaction of the Panel that the domain name was registered in bad faith along the lines of any of the examples set out in paragraph 4(b) of the Policy.
The Complainant has stressed the bad faith nature of the current use of the domain name arguing that deception of Internet users is inevitable. The domain name indicates that the website to which it is connected is a website connected with the Complainant or at the very least a website connected with the Complainantís CAM350 product, when in fact the website promotes a competing product.
The Panel agrees that this is an abusive use of the domain name. The Panel agrees that on termination of the licence (assuming it was effectively terminated), the Respondent had no justification for continuing to use the domain name.
However, bad faith use on its own is not enough. Paragraph 4(a)(iii) of the Policy calls for bad faith registration as well as bad faith use. For the purposes of the Policy (as it is currently drafted) a good faith registration cannot be converted into a bad faith registration simply by virtue of subsequent bad faith use. If and to the extent that previous decisions such as UVA Solar GmbH & Co K.G. v. Mads Kragh, WIPO Case No D2001-0373 (May 7, 2001) seem to suggest the contrary, the Panel declines to follow them. The Policy was designed to deal with cybersquatters i.e. registrants registering domain names with bad faith intent. While the Panel deplores the current use of the domain name, the Panel is satisfied that the Respondent had good faith intentions when it registered the domain name.
The Complaint is dismissed.
Nels T. Lippert
Dated: April 14, 2003