promatic.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Promatic International Limited v. Name Administration Inc.

Case No. D2006-0673

1. The Parties

The Complainant is Promatic International Limited of Station Works, Hooton, South Wirral, United Kingdom of Great Britain and Northern Ireland (“the Complainant”), represented by Smithsons of Manchester, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Name Administration Inc., Grand Cayman, Cayman Islands B.W.I. (“the Respondent”) represented by John Berryhill of Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <promatic.com>, (the “Domain Name”) is registered with Domain Name Sales Corp. (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (“the Center”) on May 30, 2006. On May 30, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 31, 2006 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 on June 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response June 28, 2006. The Response was filed with the Center June 28, 2006.

The Center appointed Tony Willoughby, Matthew S. Harris and David E. Sorkin as panelists in this matter on July 17, 2006. 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.

4. Factual Background

The Complainant is a company incorporated in the UK, which is engaged in the manufacture and sale of clay pigeon target launchers.

FE Robinson (Pro-Matic) Limited, a company with the same address as the Complainant, is the registered proprietor of device mark registrations in the UK and USA. The device in question comprises the name PRO-MATIC (underlined) with an arc of clays above. The registrations are in class 28 for “clay target launchers used in conjunction with all forms of clay target” and date back to the year 2000. The records of the USPTO indicate a claimed first use of the mark in 1989.

The Respondent registered the Domain Name on March 19, 2002.

The Domain Name is connected to a commercial directory website featuring links to a wide variety of other sites, mainly involved in manufacturing processes and supply chain distribution services. The page contains the legend “promatic.com is an “NA media™” content distribution channel”.

In 2004 and 2005 various approaches were made to the Respondent by the Complainant’s agents seeking transfer of the Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant does not expressly assert that the Domain Name is identical or confusingly similar to a trade mark in which it has rights. It claims to use PROMATIC as a trade mark in connection with its business and it points to ‘its’ trade mark registrations referred to above. The Complainant does not explain the relationship between itself and the registered proprietor of those registrations.

The Complainant adds that the Domain Name “is very similar to the domain name of the Complainant”, but fails to identify what its domain name is.

The Complainant refers to correspondence between the parties, but does not exhibit it, nor, save as mentioned below, does the Complainant describe the content of the correspondence. The Complainant claims that the Respondent failed to reply to two of those letters.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. It asserts that “the Domain Name is used as a search engine to promote other manufacturers and engineering companies. The Complainant refers to an admission made in an email from the Respondent’s agent that the Respondent acquired the Domain Name “from among a batch of expired and abandoned domain names, as it sometimes occurs that unwanted domain names have residual advertising traffic value.”

The Complainant asserts that the Respondent has no interest of any kind in the business area in which the Complainant is engaged, namely clay target launchers.

The Complainant asserts that the Respondent’s website has been static for a considerable time “and shows no commercial purpose thereby demonstrating that the Respondent is using the disputed domain name in bad faith as a means of directing customers away from the Complainant”.

The Complainant then refers to an English Court of Appeal authority for the proposition that cybersquatting can constitute both trade mark infringement and the tort of passing off and concludes as follows:

“It is submitted by the Complainant that the Respondent’s use of the disputed domain name constitutes passing off and/or an instrument and that the Respondent has used this instrument of fraud in the manner stated above in order to obtain valuable consideration in excess of the domain name registrant’s out of pocket costs directly related to the disputed domain name.”

B. Respondent

The Respondent denies all the Complainant’s allegations.

It points out that the trade mark registrations referred to by the Complainant are device mark and not word mark registrations. It criticizes the Complainant for not having exhibited the marks. It points out that the Complainant’s rights are not exclusive as a large number of other entities have rights in respect of the name PROMATIC. It asserts that the Domain Name is not confusingly similar to the Complainant’s trade mark, the graphical content of the registered mark being sufficient to differentiate. It further observes that the Respondent is not using the Domain Name in relation to the goods covered by the Complainant’s trade mark registrations.

It contends that the Panel should not take account of the fact that the Complainant has been trading under the PROMATIC name because trade names were expressly excluded from the WIPO report which first introduced the concept of the Policy.

The Respondent contends that it has rights or legitimate interests in respect of the Domain Name. It contends that the name PROMATIC is simply a contraction of “professional” and “automatic”. The Respondent claims that its site at “www.promatic.com” is a normal trading site. It earns revenue from the advertisers whose links feature on the site. It claims that this constitutes a bona fide offering within the meaning of paragraph 4(c)(i) of the Policy.

The Respondent denies that it registered and is using the Domain Name in bad faith. It points out that for the Complaint to succeed under this head, the Respondent must have had the Complainant or its trade mark in mind when registering the Domain Name. It claims never to have heard of the Complainant prior to the Complainant’s first approach in 2004.

The Respondent points out that it has never sought to sell the Domain Name and when the Complainant’s agents have approached it, it has informed the Complainant’s agents that it will not do so without first knowing the use to which it will be put. The Respondent contends that this is indicative of its unwillingness to facilitate in any way any infringement of a third party’s rights. Insofar as the Complainant complains of the Respondent’s failure to respond to certain letters in 2005, the Respondent asserts that in the course of that year extreme weather conditions compelled the Respondent to leave the island for a time.

The Respondent contends that the Complainant has produced no evidence in support of its passing off allegation. There is nothing about the Respondent’s use of the Domain Name, which supports the allegation.

The Respondent concludes with a criticism of the Complainant and its agent primarily directed to the fact that the Complainant’s agent persisted in corresponding with the Respondent direct when he/she knew that the Respondent was represented. The Respondent asks that the behaviour to which objection is taken should not pass unmentioned in the decision.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that

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

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

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

B. Identical or Confusingly Similar

While the trade mark registrations to which the Complainant refers are not in the name of the Complainant, the registered proprietor trades from the same address as the Complainant. For the purposes of this decision, the Panel is prepared to accept that the registrant is either the Complainant under an old name or that the two are so closely associated that the Complainant can fairly be said to have rights under those registrations.

The Respondent correctly observes that the registrations are not word marks as the Complainant stated them to be. Nonetheless the word PRO-MATIC is a dominant (arguably the predominant) element of the mark. Phonetically, the Domain Name and the registered marks are identical.

While the Respondent is correct in stating that the Complainant is by no means the only entity with rights in the name PROMATIC/PRO-MATIC, the important point insofar as paragraph 4(a)(i) of the Policy is concerned is that the Complainant does have rights.

Rights may be unregistered rights. Whether or not the Complainant has unregistered trade mark rights in respect of its trading name PROMATIC is impossible for the Panel to assess as the Complainant provides no details of the extent of its business under the name.

The mark in respect of which the Complainant has registered rights is not identical to the Domain Name, thus, for the purpose of paragraph 4(a)(i) of the Policy, the Panel has to be satisfied that there is a confusing similarity between the two.

The test for confusing similarity is a comparison of the Domain Name with the trade mark. It is a visual comparison. The manner in which the Domain Name is being used is not relevant for this purpose.

The Domain Name comprises the word PROMATIC and the generic domain suffix, which may be ignored when assessing confusing similarity. Set against that is the textual element of the registered mark, PRO-MATIC, which is a dominant (arguably the predominant) element of the mark.

The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

While there is nothing before the Panel to suggest that the business conducted under and by reference to the Domain Name is inherently objectionable, the Panel declines to find that such a use of the Domain Name gives the Respondent a right or legitimate interest in respect of the Domain Name. The Panel prefers to deal with this complaint under the next head.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a non-exhaustive list of four examples of what shall constitute evidence of bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy. All of those examples involve the respondent intentionally targeting the complainant or its trade mark.

The Respondent denies having been aware of the existence of the Complainant prior to the Complainant first having made contact with the Respondent and there is nothing before the Panel to cast doubt on that denial.

Some panelists have suggested that where respondents acquire their domain names by way of automated processes targeted at lapsed/abandoned domain names, there is a duty on the respondent to conduct a search to check that the domain name in issue is not a trade mark of a third party. See for example the majority decision in Red Nacional De Los Ferrocarriles Espanoles v. Ox90, WIPO Case No. D2001-0981 and the more recent decision in Mobile Communication Service Inc. v. Webreg, RN, WIPO Case No. D2005-1304. These panelists indicate that a failure to conduct a check may lead to a finding of constructive knowledge leading in turn to a finding of constructive bad faith.

While the Domain Name was acquired by the Respondent from a batch of lapsed domain names by way of an automated process, this Panel is uncomfortable with the concept of constructive bad faith. A majority of this Panel is of the view that for purposes of paragraph 4(a)(iii) of the Policy nothing less than actual knowledge will suffice, although when appropriate such actual knowledge may of course be inferred based upon circumstantial evidence. In any event, here there is no evidence nor suggestion that the reason why the Domain Name was registered (whether automatically or otherwise) was as a result of any goodwill or reputation that the Complainant has built up in the name.

There being nothing before the Panel to suggest that when registering the Domain Name the Respondent might have had the Complainant or its trade mark in mind, the Panel is not satisfied that the Domain Name was registered and is being used in bad faith.

Finally, the Respondent requests the Panel to opine on the Complainant’s behaviour (and that of its agent) in corresponding directly with the Respondent when they knew that the Respondent was represented by counsel. The Panel declines to do so on the basis that the matters complained of took place prior to the launching of the Complaint. Of more concern to the Panel is the fact that the Complaint failed to describe the Complainant’s trade marks accurately and failed to exhibit the complete correspondence of the parties in circumstances where the Complainant was seeking to make a point out of that correspondence.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Date: July 19, 2006