WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation

Case No. D2009-0308

1. The Parties

The Complainant is SPECS GmbH of Berlin, Germany, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States of America.

The Respondent is SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation of Florida, United States of America.

2. The Domain Names and Registrar

The disputed domain names <specs.com> and <specsusa.com> are registered with Melbourne IT Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2009. On March 10, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On March 13, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2009. Although several emails were received from the Respondent (refer to paragraph 4 below), no formal response was filed with the Center.

The Center appointed John Swinson as the sole panelist in this matter on April 20, 2009. 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. Communications from the Respondent

Between March 12 and April 26, 2009, the Respondent sent a large number of emails to the Centre (as well as a large number of third parties) almost on a daily basis.

There were over fifty emails from the Respondent.

While some brief comments about this proceeding were made in one or two emails, the Panel does not consider that any of the emails (whether considered in isolation or cumulatively) satisfy the formal requirements of a Response as required by the Rules. Some emails were submitted after the 20 day period in which to file a Response had lapsed (see paragraph 5(a) of the Rules). The emails also did not generally comply with paragraph 5(b) of the Rules. For example, hard copies were not submitted to the Center; the Respondent did not provide its name, postal and e-mail addresses, and the telephone and telefax numbers; and the Respondent (or its authorised reprsentative) did not sign any document certifying that its contents were accurate. If the emails were considered cumulatively, they would well exceed the 5,000 word limit prescribed for a response, and be inadmissible on that basis (see paragraph 5(b)(i) of the Rules and paragraph 10(b) of the Supplemental Rules).

The first email sent by the Respondent advised that statements made in the Complaint were wrong, and claimed that the Respondent had filed criminal charges against the Complainant for perjury and mail fraud with a Berlin agency. Even if true, this would not appear to amount to a court proceeding commenced by the Respondent, it would not have any apparent material impact on these proceedings under the Policy (see paragraph 18 of the Rules).

In later emails, the Respondent appears to treat the Center as the party responsible for making the Complaint, while other emails ask the Center for advice in relation to other domain name issues.

However in the majority of emails, the Respondent makes derogatory, offensive and hostile remarks, and makes certain threats against the Centre’s staff.

On March 16 and 19, 2009, the Center wrote to the Respondent, requesting that the Respondent desist from sending any further such emails, and reminding the Respondent that a response (submitted in the form required by the Rules) was due on April 5, 2009. The Respondent continued to send a significant number of emails after this date, but failed to submit a valid Response.

Paragraph 14 of the Rules allows the Panel to proceed to a decision on the Complaint where the Respondent does not comply with certain time periods, and draw such inferences as it considers appropriate where the Respondent does not comply with any provision of the Rules. The Panel proceeds to make its decision on the following basis:

- the Respondent was given a reasonable opportunity (as well as several reminders) to file a Response, and chose not to do so.

- contents of the Respondent’s emails do not comprise a substantive response, and are of dubious relevance to this administrative proceeding.

- the Respondent appears to have little understanding of the contractually mandatory nature of UDRP proceedings, and has acted extremely inappropriately in its dealings with the Center. The Respondent has evidenced through its email correspondence, a pattern of offensive behavior.

5. Factual Background

The Complainant is based in Berlin, Germany, and is a company which engages in the design and production of instruments for nanotechnology, material science and surface science.

The Complainant has registered trade mark rights in SPECS in Germany, and in many other countries via an international registration. The Complainant also has a pending application for SPECS in the United States (serial number 77283191).

The Respondent operates a website from the disputed domain name <specs.com>. The contact information on this website shows that the Respondent is located in Florida, United States. The website at the disputed domain name <specs.com> states that the Respondent has over 20 years experience and “is a leading manufacturer and distributor of surface analysis and thin film deposition components”. The website offers the same type of products which appear on the Complainant’s website. The website also contains the logo form of the Complainant’s SPECS trade mark (or something very similar to this trade mark).

There is no website operating from the disputed domain name <specsusa.com>.

6. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant was founded in 1983 in Germany, and is a leading manufacturer of components and systems for surface analysis, based on ion and electron spectroscopic methods. The Complainant has a worldwide network of cooperation partners and a sales and support network.

In 1994, the Complainant created SPECS USA Corporation to act as the Complainant’s sales and service centre in North America and Latin America. This company was closed in 2001 for tax purposes however business in the United States continued, and a new SPECS USA Corporation was incorporated in 2006. The Complainant has also recently created a subsidiary company located in Boston, United States.

The Complainant has a German trade mark registration for SPECS, issued on October 26, 1990 (Registration No. 116661); an International Registration for SPECS, issued on January 2008 (Registration No. 960812), initially covering China and Japan but later covering Norway, Russian Federation, Singapore, Republic of Korea, Switzerland, Turkey and Ukraine. The Complainant also has pending applications for SPECS in the European Community and United States.

Through sale and promotion of SPECS products and services by the Complainant, and control over the nature and quality of such products and services, the SPECS name and mark has become associated worldwide with the goods and services offered by the Complainant.

The Complainant also owns a large number of domain names relating to its business, including <specs.de>, <specsus.com> and <specs.eu>.

From 1994 to 2000, the Respondent was employed by the Complainant in both Germany and the United States as a sales manager. In 2001, the Complainant and the Respondent entered into a distribution agreement, where the Respondent served as a distributor of the Complainant’s products in North, Central and South America. The Complainant granted the Respondent the limited right to use the SPECS mark to market and sell the Complainant’s products during the term of the distribution agreement. The agreement prohibited the Respondent from registering the brands, trade names and other marks of the Complainant for the Respondent’s own use, and required the Respondent to return the Complainant’s property upon termination. The Complainant permitted the Respondent to use on the Complainant’s behalf the <specs.com> domain name which at that stage was owned by the Complainant. The Respondent also registered the <specsusa.com> domain name on the Complainant’s behalf and in the Complainant’s name on January 25, 2000.

The distribution agreement was terminated, effective at the end of 2005. After that time, there was no contractual or other relationship between the Complainant and the Respondent which gave the Respondent any license, permission or other rights by which the Respondent could use the SPECS name and mark (including the disputed domain names). When the registrations for the disputed domain names lapsed, the Respondent registered these names.

Several court proceedings also took place between the Complainant and the Respondent in Germany from 2006 to 2008. The Complainant sought various motions and injunctions which were granted in the Complainant’s favour. For example, the court ordered that the Respondent refrain from advertising and representing that it offers the Complainant’s products for sale, that the distribution agreement had been terminated from the end of 2005, and that the Respondent cease using the SPECS name in commerce. Despite this the Respondent has continued to violate the court orders. (In section IX of the Complaint, the Complainant discloses that there are pending legal proceedings involving the Respondent in Germany, however these proceedings do not inhibit the Panel’s ability to order the transfer of the disputed domain names under the Policy).

The Respondent continues to represent from the “www.specs.com” website that the products it sells and promotes are those of the Complainant. This has caused extensive confusion in the market, as the Respondent offers the same type of goods and services offered by the Complainant, including those manufactured by the Complainant and its competitors.

While <specsusa.com> does not currently direct to a developed site, when typed into a web browser, the first suggested link is to the disputed domain name <specs.com>.

The disputed domain names are confusingly similar to the SPECS name and mark, because they incorporate the entirety of the Complainant’s SPECS trade mark. The disputed domain name <specsusa.com> consists of the Complainant’s trade mark combined with a geographic term “USA”. Internet users are likely to believe that this domain name is owned by the Complainant and is likely to divert consumers away from the Complainant’s US websites (such as “www.specsus.com”). Combining a trade mark with a geographic term is not sufficient to avoid confusion.

Any contractual rights the Respondent had to use the Complainant’s trade mark were terminated on December 31, 2005, and the Respondent has no remaining rights in the SPECS trade mark. The Respondent continues to use the disputed domain names in contravention of the distribution agreement and court orders.

The Respondent is using the disputed domain names to disrupt the Complainant’s business, as the website promotes the same components and systems for surface analysis as the Complainant, and are likely to be perceived as being related to the Complainant’s goods and services, or as being related to or coming from the Complainant. Several instances of confusion have already occurred. The Complainant’s potential distribution partners have also been deterred by the Respondent’s use of the disputed domain names.

The Respondent’s use of the disputed domain names is neither bona fide or legitimate using a trade mark in a domain name without permission from the trade mark holder to sell related goods is not bona fide.

The Respondent’s past contractual rights to use the Complainant’s trade mark were limited to use in advertising the Complainant’s products. The Complainant never permitted the Respondent to obtain any domain names containing the SPECS mark. The Respondent has used the names for commercial gain to prevent the Complainant’s rightful use of the domains, and to attract Internet users to the Respondent’s website based on a likelihood of confusion with the Complainant’s trade marks.

The Respondent has falsely represented on the “www.specs.com” website that the goods it provides are from the Complainant. The Respondent has also posted confidential data and defamatory claims about the Complainant and its shareholders on the website, which has caused confusion among the Complainant’s customers.

B. Respondent

As discussed above, the Respondent did not file a formal Response which complies with the Rules, and therefore did not respond to the Complainant’s contentions.

7. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

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

Paragraph 4(a) of the Policy states that the burden of proof lies with the complainant to establish that all these three elements are satisfied.

A. Identical or Confusingly Similar

The disputed domain name <specs.com> is identical to a registered trade mark which the Complainant has owned since 1990 (German Registration No. 116661). The Complainant also has registered trade mark rights in SPECS in many other countries around the world, pursuant to an International Registration.

The disputed domain name <specsusa.com> is confusingly similar to the Complainant’s registered SPECS mark. This is because the addition of a geographic identifier such as “USA” merely indicates where the goods offered under a trade mark originate from, and is not sufficient to prevent a finding of confusing similarity (see C & A Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. 2004-0466).

The Complainant has satisfied the first element, in respect of both disputed domain names.

B. Rights or Legitimate Interests

The Complainant admits that the Respondent used to have a right to use the SPECS trade mark, and to manage the disputed domain names, under a distribution arrangement. It appears that the Respondent registered the disputed domain names while the distribution arrangement with the Complainant was in place (in November 2003). However the evidence provided in the Complaint clearly shows that the distribution relationship terminated effective of December 2005, and any such rights the Respondent had in relation to use of the SPECS mark ceased at this time. The Respondent has not provided any evidence which rebuts this position.

The Respondent is known by the name SPECS Scientific Instruments Inc, and does business as SPECS Technologies Corporation. However as mentioned above, the Complainant withdrew any authorisation or license for the Respondent to use the SPECS mark in its business or trading name, or any domain name as at the end of 2005. Therefore the Respondent’s trading name cannot constitute rights in the disputed domain name when the Respondent is provided competing goods and services.

There are a number of previous panel decisions where the respondent was a former licensee or authorised distributor, who continued to use business-related domain names after the arrangement was terminated (see for example Green Tyre Company Plc. v. Shannon Group,WIPO Case No. D2005-0877; Those Characters From Cleveland Inc. v. User51235 ([email protected]),WIPO Case No. D2006-0950). In these cases, when the licence or distribution agreement has terminated, the respondent is generally found to have no rights or legitimate interests in a domain name which was only used in the respondent’s capacity as licensee or authorised distributor.

As noted in the cases mentioned above, the Respondent could not have been unaware of the Complainant and its SPECS trade mark when it purchased the disputed domain names, so it can hardly now be said that its subsequent use of the names without license or authorization from the trade mark owner is bona fide.

The Respondent is making commercial use of the website, by promoting goods and services related to surface analysis. It is well known in UDRP cases that “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.” (See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847). The Respondent is using the Complainant’s trade marks (both in the domain names and on the website) to sell goods and services of the Complainant’s competitors. Such use is clearly not a bona fide offering of goods or services.

Accordingly, the second element has been established, in relation to both disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

One of those circumstances is that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.

The Panel has no doubt that the Respondent is attempting to create the impression from the “www.specs.com” website that it is an authorised reseller or distributor of the Complainant. This intention is demonstrated by the following:

- use by the Respondent on its website of the Complainant’s logo trade mark;

- use of the Complainant’s trade mark in the Respondent’s business name;

- sale or promotion of goods and services which are the same as or similar to the Complainant’s goods and services.

By promoting the same or competing goods and services for sale, the Respondent is using the website to attract commercial gain, at the Complainant’s expense.

The Panel infers that the Respondent registered the <specsusa.com> domain name, primarily for the purpose of disrupting the business of a competitor (the Complainant). This constitutes bad faith under paragraph 4(b)(iii) of the Policy.

When the distribution arrangement with the Complainant ended, the Respondent should have been well aware that it had no lawful entitlement or licence to use the Complainant’s SPECS trade marks (in a domain name or otherwise). The Panel can comfortably infer bad faith on the part of the Respondent due to the circumstances discussed above. This view is reinforced through acts of the Respondent in continuing to represent itself as a reseller or distributor of the Complainant, when that is clearly not the case (as evidenced by inter alia the numerous court actions pursued by the Complainant).

Accordingly, the third element has been met in relation to both disputed domain names.

8. 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 domain names, <specs.com> and <specsusa.com> be transferred to the Complainant.

John Swinson
Sole Panelist

Dated: April 27, 2009