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 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 Complainant�s 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. Coleman�s email of April 7, 2003. It is by no means certain that it will admit the document in question, but in light of Mr Coleman�s 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 Complainant�s 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 Respondent�s 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 Inc�s 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 Complainant�s 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 Respondent�s 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 Innoveda�s 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 Inc�s "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 for our own EDA department. Currently the domain is supplied to Mahle GmbH, which is rightfull, as "" 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 r
