naturalmicrosystems.com

WIPO Arbitration and Mediation Center

The Complainant is Natural Microsystems Corporation, a US company with business offices in 100 Crossing Blvd., Framingham, MA., USA.

The Respondent is unlockededideas.com, being the business name of William P. Benac, Jr., of 654 Handley Trail, Redwookd City, CA, USA.

The contested domain name is <naturalmicrosystems.com>, registered with Core Internet Council of Registrars, WTC II, rte. de Pré-Bois, CH-1215 Geneva, Switzerland.

On December 8, 2000, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail and the hardcopy of the Complaint was received on December 11, 2000.

Said Complaint inter alia stated that the Respondent was Mr Bill Benac.

On December 20, 2000, the Center sent a request to the Registrar asking that the Registrar to confirm that a copy of the Complaint had been sent to the Registrar by the Complainant, that the said domain name was at that time registered by the Registrar, that the Respondent was the current registrant of the said domain name, that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the said domain name. The Center further requested full contact details for the registration and an indication of the status of the domain name.

On December 25, 2000 the Registrar responded stating inter alia that it was not yet in receipt of the Complainant, that the domain name was registered to <unlockedideas.com>, that the domain name was in "production" status.

On December 27, 2000 the Center sent a Complaint Deficiency Notice to the Complainant stating that according to the information received by the Center from the Registrar, the registrant of record for the said domain name was <unlockedideas.com> and not Mr Bill Benac. The Center advised the Complainant that unless the deficiencies in the Complainat were cured within five calendar days the Complaint would be deemed withdrawn.

On December 29, 2000, an Amended Complaint was received in electronic form by the Center on December 29, 2000 and in hardcopy on January 4, 2001.

In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") the Center carried out a formal requirements compliance review, verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules and that payment in the required amount has been made by the Complainant to the Center.

On January 8, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding and advised The Respondent that in accordance with paragraph 4(c) of the Rules, the formal date of the commencement of the administrative proceeding was January 8, 2001. The said Notification further advised The Respondent that The Respondent was required to submit a Response by January 27, 2001. The Respondent was further advised that The Complainant had elected for an Administrative Panel consisting of three panelists.

On January 18, 2001 the Complainant sent a Supplement to the Amended Complaint in electronic form to the Center.

On January 26, 2001 the Center received a request from the Respondent to extend the time for submission of the Response to February 1, 2000. The Respondent made this application in view of the fact that the Complainant had filed a Supplement to the Amended Complaint on January 18, 2001.

On February 2, 2001 the Center received the Response in electonic form, the hard copy was received on February 8, 2001.

On February 26, the Center advised the Parties that Dr. Hill and Mr. Samuels had been appointed as panelists and on March 2, 2001 the Center advised the Parties that James Bridgeman had been appointed as Presiding panelist. Prior to the appointment of the Administrative Panel the Center had received a Statement of Acceptance and Declaration of Impartiality and Independence from each of the panelists.

In the view of this Administrative Panel, proper procedures were followed and this Administrative Panel is properly constituted.

The Complainant was incorporated in Delaware 1983. The Complainant has furnished this Administrative Panel with credible evidence of use of trademark Natural Microsystems by the Complainant in November 1998 and subsequently in 1999. The Complainant claims use of this trademark throughout the USA since 1983.

Although the Complainant does not claim to have a registered trademark, it claims trademark rights under common law by virtue of its established use of the said trademark.

The Complainant registered the contested domain name <naturalmicrosystems.com> but allowed the registration to lapse on August 3, 2000.

The Respondent registered the contested domain name on August 25, 2000.

The Respondent created a www site accessible via this domain name that appears to be primarily a personal site, with some material on environmental issues.

The Respondent was first contacted by Complainant by letter dated October 9, 2000 with a demand that the Respondent immediately abandon his registration of the said domain name. In a further letter dated October 23, 2000 the Complainant inter alia offered to reimburse the Respondent a sum not to exceed $200 and to pay a further nominal fee of $500 to cover out of pocket costs and expenses if the Respondent would agree to unconditionally and irrevocably transfer ownership of the registration said domain name to the Complainant and discontinue the www site at the said domain name.ç

The Complainant has established and maintains a www site at the domain name address www.nmss.com. In response to the Complainant's concerns that the use of the contested domain name by the Respondent would cause confusion, the Respondent posted the following notice on his www site:

"Legal Note: This site has nothing to do with the technology company Natural MicroSystems, Corp. Its website is www.nmss.com."

There is some disagreement between the parties as to whether the Respondent has continuously maintained this notice on his www site.

The Complainant seeks the transfer of the said domain name <naturalmicorsystems.com> to the Complainant and contends that the said domain name is identical or confusingly similar to the Respondent's trademark NATURAL MICROSYSTEMS; that the Respondent has no legitimate rights or interests in said domain name; and that the Respondent registered and is using said domain name in bad faith.

As regards the Complainant's trademark rights, the Complainant has submitted it has established common law rights since 1983 in the trademark and service mark <Natural Micosystems> in relation to the provision of goods and services in the telecommunications, internet protocol, wireless, computer telephony, voice, data, multi-media and other markets including but not limited to computer hardware and software, technical support, and other services. The Complainant has submitted credible evidence of such use in the years 1998 and 1999.

As regards the Respondent's rights or legitimate interest in the said domain name, the main arguments of the Complainant can be summarized as follows:

- The Complainant has alleged that the Respondent was not known by the domain name prior to August 23, 2000. The Complainant has further alleged that the Respondent's www site accessible via the said domain name <naturalmicrosystems.com> was incomplete. Furthermore the Complainant submits that the Respondent is the owner of a number of other domain names viz. <humanfocus.org>, <sightstream.com> and <unlockedideas.com> which are used as addresses of www sites which are not operational.

In support of its claims that the Respondent has registered and is using the said domain name in bad faith, the Complainants principal submissions can be summarized as follows:-

- the Complainant has alleged that the Respondent is endeavouring to obtain an increased offer of money from the Complaint.

Furthermore the Complainant has alleged that the Respondent has engaged in a pattern of taking domain names without any legitimate uses for such domain names.

The Complainant has alleged that the fact that the Respondent has registered said domain names <humanfocus.org>, <sightstream.com> and <unlockedideas.com> is indicative of the fact that the Respondent is engaged in a pattern of "grabbing domain names and establishing inoperable sites". The Complainant submits that such activity is evidence of the Respondents use of the said domain name in bad faith.

In the supplement to the Complaint the Complainant has alleged that the Respondent has endeavoured to mislead the Complainant by using different names viz. "William Philip Bence Jr.", "Bill Benac Jr.", "William Benac" and "Unlocked Ideas" and has produced evidence from the Utah Secretary of State records and the Utah Fictitious Business Names record to support this claim. These records indicate that the Respondent is the Registered Agent for Unlocked Ideas and is the owner of the business name Unlocked Ideas. The Complainant submits that the use of different names indicates that the Respondent is using the said domain name in bad faith.

The Respondent admits that the contested domain name is identical or confusingly similar to the Complainant’s trademark.

However, the Respondent contends that he has a legitimate interest in the contested domain name because his use of the domain name meets the criteria described in paragraph 4(c)(iii) of the Policy. According the Respondent his use of the domain name is:

- Completely non-commercial

- Being used in a legitimate way

- Not intended to misleadingly divert customers

- Not intended to tarnish the Complainant’s trademark.

The Respondent submits that the said domain name has been used by him as the address of a www site which he has established for personal purposes. The www site provides inter alia a platform for dissemination of information about land use and development in his local area. Furthermore said www site provides a forum for the Respondent's friends to discuss issues relating to the natural world's systems large and small. Furthermore the Respondent has submitted that he maintains said www site as a hobby and it has helped him to develop his technical skills in writing programs for the www site. The Respondent has submitted print-outs of pages posted on the www site to support these submissions.

The Respondent further submits that he is not engaged in diverting the Complainant's customers or tarnishing the Complainant's trademark. The Respondent has submitted that he has posted a notice on the www site disclaiming any connection with the Complainant. Furthermore the Respondent has furnished evidence that he has posted a link to the Complainant's www site to facilitate misdirected visitors to access the Complainant's site.

Furthermore, the Respondent contends that none of the bad-faith criteria of paragraph 4(b) of the Policy apply.

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:-

(ii) the Respondent has no rights or legitimate interests in respect of the said domain name; and

(iii) the said domain name has been registered and is being used in bad faith.

The Complainant has presented credible evidence that it owns the rights to the common law trademark and service mark <NATURAL MICROSYSTEMS> in the USA. It is obvious that the contested domain name <naturalmicrosystems.com> is identical or confusingly similar to said trademark and service mark. This Administrative Panel is satisfied that the Complainant has established that the said domain name is identical to the said trademark and service mark in which the Complainant has rights and this is accepted by the Respondent.

The Complainant argues extensively that the Respondent cannot have rights or legitimate interests in the disputed domain name because he (the Respondent) has never been known by that domain name and because the domain name is not connected with any bona fide offering of goods or services.

However, paragraph 4(c) of the Policy sets out how a Respondent may establish that he has rights or legitimate interest in a domain name as follows:-

i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In the present Administrative Proceedings, the Respondent has produced evidence that he is making a noncommercial use of the domain name, clearly without intent for commercial gain. Furthermore there is no evidence that the Respondent is misleading or diverting customers (as evidenced by the disclaimer presented above).

It remains to determine whether the Respondent’s use is "legitimate" under the ICANN Policy.

The Complainant argues extensively that the Respondent’s use is not legitimate for the following reasons:

1. initially, the web site was incomplete;

2. the disclaimer was added only at the request of the Complainant;

3. the site has been changed repeatedly and at times contained text that the Complainant considered harmful or embarrassing;

4. the Respondent should have known that the disputed domain name is confusingly similar to the Complainant’s trademark.

With respect to points (1), (2), and (3) above, this Administrative Panel holds that these elements are not characteristic of "non-legitimate" use. If they were, many web sites would be held "non-legitimate".

On the contrary, this Administrative Panel is satisfied that the Respondent has provided sufficient evidence to establish that his site does indeed conform to paragraph 4(c)(iii) of the Policy, because the use of a domain name for a personal site is clearly a legitimate use of a domain name, so long as there is no intent to mislead customers or be otherwise "non-legitimate".

With respect to point (4) above, confusing similarity is a necessary but not a sufficient condition for violation of the Policy. That is, elements other than confusing similarity are required in order to establish a violation of the Policy.

The Complainant has cited the US Anti-Cyber Squatting Law (15 USC paragraph 1125). This Administrative Panel has no mandate to rule on whether or not the Respondent has violated this law (or US trademark or unfair competition laws). Furthermore, the Complainant has not presented sufficient evidence that would have allowed the Administrative Panel to determine whether or not there was in fact some violation of the said US law. In accordance with the Policy, the Complainant must prove its allegations, that is, provide convincing evidence. This is not the case here.

The mandate of this Administrative Panel is to determine whether the Complainant has established that the Respondent has no rights or legitimate interest in the domain name on the basis of the evidence and arguments presented.

This Administrative Panel is satisfied that the Respondent has put up a good defence to the second element of the test i.e. that the Respondent has no rights or legitimate interest in the domain name. He has produced credible evidence that he is making a non-commercial and legitimate use of the domain name as the address for a www site which is a channel for participation in dialogue for discussion of land use and development in his local area, as a forum for discussion of issues related to natural systems on the planet and for the purposes of developing his technology skills.

The Respondent has provided evidence that the said domain name is linked to a www site that is used by the Respondent for personal purposes to promote his interest in local issues and conservation and as a hobby to allow him to develop his skills in writing code for www sites.

As the Respondent has failed to establish that the Respondent has no rights or legitimate interest in the said domain name, it is not necessary for this Administrative Panel to consider the allegations of the Respondent's registration and use of the said domain name in bad faith.

In conclusion, this Administrative Panel is satisfied that the Complainant has succeeded in establishing that the said domain name is identical to a trademark or service mark in which the Complainant has rights, but has failed to prove that the Respondent has no rights or legitimate interest in the said domain name and consequently the Complainant cannot succeed so there is no necessity for this Administrative Panel to consider the questions of whether the said domain name has been registered and is being used in bad faith.

It is the decision of this Administrative Panel that the Complaint be dismissed.

James Bridgeman
Presiding Panelist

Jeffrey Samuels
Panelist

Richard Hill
Panelist

Dated: March 22, 2001