Wilcox Associates, Inc. v. Darion Davis/Robert Dial, NULL NULL
Case No. D2007-0508
1. The Parties
Complainant is Wilcox Associates, Inc., Danville, California, United States of America, represented by Collin A. Webb, Esq., United States of America.
Respondent is Darion Davis/Robert Dial, NULL NULL United States of America.
2. The Domain Names and Registrars
The disputed domain names <pc-dmis.com> and <pcdmis.com> are registered with eNom and OnlineNic, Inc. d/b/a China-Channel.com, respectively.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2007. On April 4, 2007, the Center transmitted by email to eNom, Inc. and OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain names at issue. On April 4, 2007 eNom transmitted by email to the Center its verification response confirming that it is Registrar for the domain name <pc-dmis.com> and that Robert Dial, NULL NULL is listed as the registrant. On April 5, 2007, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that it is the Registrar for the domain name <pcdmis.com> and that Darion Davis is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint dated May 2, 2007. The Center verified that the Complaint together with the amendment to 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 May 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2007. A late Response was filed with the Center on June 1, 2007. In the absence of prejudice, the Response has been reviewed by the Panel.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on June 11, 2007. 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.
Though formally the domain names have different registrants, both resolve to identical websites. In addition, the technical contact of the domain name <pc-dmis.com> is Darion Davis, the named registrant of the other domain name. Furthermore, the Response in respect of both domain names was submitted by that same person without reference to any other persons or entities involved. For purposes of these proceedings the Panel will treat Darion Davis and Robert Dial, NULL NULL as Respondent.
4. Factual Background
Complainant is a provider of computer software for a coordinate measuring machine marketed under the trademark PC-DMIS, with commercial use dating back to 1987. Complainant holds a trademark registration for PC-DMIS issued by the United States Patent and Trademark Office (“USPTO”) and European authorities. Respondent registered the <pc-dmis.com> and <pcdmis.com> domain names long after Complainant's widespread commercial use of the marks.
5. Parties' Contentions
A. Complainant makes the following assertions:
i. Respondent's <pc-dmis.com> and <pcdmis.com> domain names are confusingly similar to Complainant's PC-DMIS mark.
ii. Respondent does not have any rights or legitimate interests in the <pc-dmis.com> and <pcdmis.com> domain names.
iii. Respondent registered and used the <pc-dmis.com> and <pcdmis.com> domain names in bad faith.
B. Respondent failed to submit a Response by the due date. However, the Panel has reviewed the late Response, particularly Item #1 on page 3 and Item #2 on page 4 of the Response, as requested by Respondent. Therein, Respondent contends:
i. Complainant condoned Respondent's use of the <pc-dmis.com> and <pcdmis.com> domain names.
ii. Complainant registered its trademark PC-DMIS after Respondent's registration of the <pc-dmis.com> and <pcdmis.com> domain names.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant successfully registered the PC-DMIS mark with the USPTO on January 1, 2002, and with European authorities on March 17, 2004, showing a commercial use date of August 1987, well before Respondent's registration of the
<pc-dmis.com> and <pcdmis.com> domain names. Under the Policy, registration of a mark with an appropriate governmental authority confers rights in that mark. Therefore, the Panel finds that Complainant has established rights in the PC-DMIS mark pursuant to Policy paragraph 4(a)(i). See Expedia, Inc. v. Emmerson, NAF No. FA 873346 (February 9, 2007) (“Complainant's trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy paragraph 4(a)(i).”). The Panel notes that it is well-established that the registration of a domain name after a complainant has acquired registered trademark rights does not prevent a finding of identity or confusing similarity, particularly where, as here Complainant has provided evidence of prior use as an unregistered mark.
The Panel finds that Policy paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent does not have rights or legitimate interests in the <pc-dmis.com> and <pcdmis.com> domain names, and that Respondent is not commonly known by the disputed domain names. There is no compelling evidence in the record indicating that Respondent is commonly known by the disputed domain names. Therefore, the Panel concludes that Respondent is not commonly known by the <pc-dmis.com> and <pcdmis.com> domain names pursuant to Policy paragraph 4(c)(ii). Seealso M. Shanken Commc'ns v. Worldtravelersonline.Com, NAF No. FA 740335 (August 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy paragraph 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is using the <pc-dmis.com> and <pcdmis.com> domain names to redirect Internet users to Respondent's website which advertises programming services and different versions of Complainant's PC-DMIS software, and even attributes the “registered brands” PC-DMIS PRO, PC-DMIS CAD and PC-DMISCAD++ to Complainant's parent company, making it highly likely to confuse Internet users as to the sponsorship of the websites. The Respondent also uses the <pc-dmis.com> and <pcdmis.com> domain names to link to other websites owned by Respondent, which offer completely unrelated goods for sale. While one or more of Complainant's representatives may have tolerated and, at one time, may even have condoned Respondent's use of the domain names, Complainant never formally licensed Respondent nor did it relinquish its rights to control its own trademark. It was at Respondent's risk that it chose to do business under another's established trademark and not under a mark that could be distinguished by Internet users. The Panel finds that Respondent's use of the disputed domain name does not constitute a bona fide offering of goods and services under Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii). See Am. Int'l Group, Inc. v. Benjamin, NAF No. FA 944242 (May 11, 2007) (finding that the respondent's use of a confusingly similar domain name to advertise real estate services which competed with the complainant's business did not constitute a bona fide offering of goods or services under Policy paragraph 4(c)(i), or a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii)); seealso Summit Group, LLC v. LSO, Ltd., NAF No. FA 758981 (September 14, 2006) (finding that the respondent's use of the complainant's LIFESTYLE LOUNGE mark to redirect Internet users to respondent's own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii)).
The Panel finds that Policy paragraph 4(a)(ii) has been satisfied.
C. Registered and Used in Bad Faith
Respondent is using the <pc-dmis.com> and <pcdmis.com> domain names to divert customers to Respondent's websites, evidence of bad faith pursuant to Policy paragraph 4(b)(iii). SeeEthnicGrocer.com, Inc. v. Latingrocer.com, NAF FA No. 94384 (July 7, 2000) (finding bad faith where the respondent's sites pass users through to the respondent's competing business).
Complainant has been a provider of computer software dating back to 1987, well before the registration of the domain names. Respondent appears to be familiar with Complainant and the computer software market. Based on the record the Panel finds that in all likelihood Respondent had Complainant in mind when registering the disputed domain names. Due to Respondent's use of the disputed domain names to redirect Internet users to Respondent's website which advertises programming services and different versions of Complainant's PC-DMIS software, the Panel finds that Complainant's customers may become confused as to the affiliation, endorsement, or sponsorship of the goods advertised on Respondent's website. Respondent is using this likelihood of confusion in an attempt to attract Internet users for commercial gain, further evidence of bad faith pursuant to Policy paragraph 4(b)(iv). See AOL LLC v. AIM Profiles, NAF No. FA 964479 (May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant's AIM mark and the competing instant messaging products and services advertised on the respondent's website which resolved from the disputed domain name); see also Asbury Auto. Group, Inc. v. Tex. Int'l Prop. Assocs., NAF No. FA 958542 (May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iv)). The Panel finds Respondent's assertion that Complainant condoned its use of the disputed domain names to be unpersuasive in the circumstances.
Finally, Complainant submitted evidence that Respondent threatened that, if Complainant did not grant him a license to use its mark, Complainant would lose sales of its software to Respondent's employer, extortionate and in bad faith. Complainant has the unfettered right to control the use of its trademark.
The Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the <pc-dmis.com> and <pcdmis.com> domain names be transferred to Complainant.
Sandra J. Franklin Sole Panelist
Dated: July 18, 2007
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