WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sormac B.V. v. Domains by Proxy Inc. and James McCrory
Case No. D2007-1338
1. The Parties
The Complainant is Sormac B.V., Venlo, The Netherlands, represented by Holland Van Gijzen, Netherlands.
The Respondents are:
(a) Domains by Proxy Inc., Scottsdale, Arizona, United States of America; and
(b) James McCrory, Bloomington, Indiana, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2007. On September 12, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 12, 2007, Go Daddy Software transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. It advised that Domains by Proxy Inc. was a proxy service for Mr. McCrory. In response to a notification by the Center providing the registrant information received from the Registrar and inviting an amendment to the Complaint, the Complainant filed an amendment to the Complaint on September 28, 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 Respondents of the Complaint, and the proceedings commenced on October 3, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2007. The Response was filed with the Center on October 16, 2007 by James McCrory.
The Center appointed Sir Ian Barker as the sole panelist in this matter on November 1, 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.
The Respondent, James McCrory, will be referred to as “the Respondent”. However, since there was a proxy registration, the practice has developed of having both the proxy service and the true respondent both named as respondents. See eg. WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975, and the cases cited therein and.
4. Factual Background
The Complainant is a private company incorporated under the laws of the Netherlands, which has had a long history and experience in the field of manufacturing and technology in the agricultural industry throughout the world. It uses the trademark SORMAC for machinery in the food processing industry throughout the world.
It owns trademarks in the United States and Benelex for the words “sormac” and “backus sormac”. The United States trademark had a filing date of March 10, 2005.
The Respondent, James McCrory, is the President of and major stockholder in Sormac Corporation which was incorporated under the laws of the State of Indiana on January 14, 1985. It has been using the name “Sormac” since then in connection with its business as money lender and pawnbroker. It has the necessary licences to operate at three locations in the State of Indiana for making unsecured loans and for pawnbroking.
The Complainant gave the Respondent no rights in respect of the disputed domain name.
5. Parties’ Contentions
A. Complainant
The disputed domain name is identical to the Complainant’s trademark SORMAC and confusingly similar to the trademark BACKUS SORMAC. The word “sormac” is universally relied upon as identifying the Complainant.
The Respondent has no rights nor legitimate interests in respect of the disputed domain name. It was not given any by the Complainant. The Respondent has never used the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has never been known under the name “Sormac” and does not make a legitimate, non-commercial or fair use of the disputed domain name. There is no justification in the choice or adoption of the disputed domain name.
Because of the strong similarity to the Complainant’s trademarks, the disputed domain name gives a false impression of being associated with the products of the Complainant, with the potential to mislead customers.
By choosing the name for his website, it was reasonable for the Respondent to have undertaken a search and that, therefore, the disputed domain name was registered and is being used in bad faith.
B. Respondent
The Respondent is the President and major stockholder of Sormac Corporation which was incorporated under the law of the State of Indiana. It has been carrying on business there for many years. The company is licensed by the State of Indiana as a commercial lender and the Respondent is shown in State records as the President of Sormac Corporation and its registered agent. The existence of Sormac Corporation since 1985 should have been known to the Complainant, if it had undertaken a reasonable search.
The Respondent has rights to the use of the disputed domain name. As President and major shareholder of Sormac Corporation the registered the disputed domain name at the direction of and with the authorization of Sormac Corporation Board of Directors. It was registered so that it could be used in the legitimate pursuit of the business interests of Sormac Corporation. Sormac Corporation is a licensed lender and pawnbroker, currently engaged in legitimate business in the State of Indiana. It is commonly known to its customers as “Sormac Corporation”.
The disputed domain name was not registered in bad faith, nor is it being used in bad faith. It was registered at the direction of the Sormac Corporation Board of Directors for the future marketing and promotion of Sormac Corporation services and products. The company is not a competitor of the Complainant and its services and products relate to the financial services industry.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to obtain a decision that a domain name be transferred:
(a) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests with respect to the domain name; and
(c) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is identical to the registered trademarks of the Complainant for SORMAC and confusingly similar to the mark for BACKUS SORMAC. Therefore, the Complainant succeeds on the first criterion under Paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Once a Complainant has shown, as here, that it gave no rights to the Respondent to use the disputed domain name, the onus then shifts to the Respondent to show whether he comes within one of the exceptions under Paragraph 4(c) of the Policy. A respondent needs to show inter alia:
(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 and services; or
(ii) you as an individual business or other organisation have been commonly known by the domain name, even if you have acquired no service or trademark rights.
The evidence supplied by the Respondent, backed by official documents from the State of Indiana, shows that he has been associated with a legitimate business under the name of “Sormac Corporation” since its incorporation in 1985. The various documents produced show that, in the State of Indiana, Sormac Corporation, conducts a legitimate business and has the necessary licences to carry out that business.
Consequently, the Respondent has discharged the onus of showing both that, before notice of the dispute he has used a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services and, also, that the business conducted by the Respondent has been commonly known by the disputed domain name, even though it may have acquired no trademark or service rights.
Consequently, the Complainant has not established the second limb of Paragraph 4(a) of the Policy and the Complaint must be dismissed.
C. Bad Faith
There is no need to proceed to determine whether the disputed domain name was registered and is being used in bad faith. It seems unlikely that such a finding could be made in view of the clear evidence of a legitimate business having been conducted for many years by the Respondent using the disputed domain name.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Sir Ian Barker
Sole Panelist
Dated: November 9, 2007
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