WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Corrosion Technology International, LLC v. Anticorrosives Industriales Ltda. (ANCOR), Ancortecmin S.A., and CTI ANCOR Case No. D2008-1965 1. The Parties
The Complainant is Corrosion Technology International, LLC of Wisconsin, United States of America, represented by Manion Mcdonough & Lucas, P.C. of the United States of America.
The Respondents are Anticorrosives Industriales Ltda. (ANCOR), Ancortecmin S.A., and CTI ANCOR of Santiago, Chile. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2008. On December 23, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On December 23, 2008, Network Solutions, LLC transmitted by email to the Center its verification response disclosing a registrant name for the disputed domain name which differed from the named Respondent in the Complaint. The Center sent an email communication to the Complainant on January 6, 2009, providing the correct registrant name disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on January 7, 2009. The Center verified that the Complaint together with the amended 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 January 12, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 3, 2009.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 11, 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. Factual Background
The Complainant operates a business that designs, manufactures and offers for sale electrolytic refining cells and associated equipment. The Complainant and the Respondent operated a joint venture, which was known as “CTI ANCOR”. The joint venture was terminated on April 23, 2004 pursuant to an Order of the United States Bankruptcy Court of the Western District of Pennsylvania. Subsequent to the termination of the joint venture, the parties were involved in various disputes, including claims of patent and trademark infringement, which were eventually resolved by way of Settlement Agreement dated September 28, 2005, annex D of the Complaint (“the Settlement Agreement”).
The domain name was registered and used during the joint venture. Pursuant to the Settlement Agreement, after the termination of the joint venture, the domain name and associated website were intended to lead Internet users to a single notification page advising that the CTI ANCOR joint venture had been terminated. The Settlement Agreement contemplated that the notification page would provide two (2) links to each of the Complainant's and Respondent ANCOR's respective websites.
At the time the Complaint was filed, the Respondent CTI ANCOR continued to operate the website under the domain name, but had not changed the settings, as required by the Settlement Agreement. The Panel notes however that, as of the date of this decision appropriate changes have now been made to the website, so that users are directed to links leading to the respective websites of the parties. 5. Parties' Contentions A. Complainant (a) Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the Complainant's trademark CTI.
The Complainant submits that is the lawful holder and owner of the name, and trademark CTI.
The Complainant contends that the domain name in question includes the CTI trademark in its entirety, together with ANCOR. The use of the combined term CTI ANCOR was employed during the operation of the joint venture between the parties. Pursuant to the termination of the joint venture and the Settlement Agreement between the parties, neither the Complainant nor the Respondent ANCOR were entitled to use the combined term CTI ANCOR, and in particular the Respondent ANCOR was not entitled to use CTI alone or in combination with any or word. (b) Rights or Legitimate Interests
The Complainant contends that the Respondents cannot demonstrate or establish any legitimate interest in the disputed domain name. The Respondent CTI ANCOR registered the domain name in question pursuant to a joint venture that was operated by both the Complainant and the Respondent. The Complainant submits that the joint venture was terminated in April 2004 and there is now no relationship between the Complainant and the Respondent ANCOR giving rise to any license, permission or other right by which Respondent could own or use any domain name incorporating the Complainant's CTI trademark. The Complainant contends that the Respondents are using the domain name to direct Internet users searching for the joint venture entity CTI ANCOR to their websites ANCOR or Ancortecmin, contrary to the obligations set out in the Settlement Agreement dated September, 2005. (c) Registered and Used in Bad Faith
The Complainant contends that the domain name was registered and is being used in bad faith based on the following factor: (i) Respondents' use of a confusingly similar domain name to operate a website that provides a link to websites for purposes of monetary gain, contrary to the obligations set out in the Settlement Agreement dated September, 2005. B. Respondent
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The respondent have no rights or legitimate interest 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
This dispute concerns a relatively narrow issue which remains outstanding after the resolution of multi-dimensional litigation concerning the termination of a joint venture in 2004. During the term of the joint venture, the domain name (and corresponding website) was apparently owned and operated without dispute. Significantly, the registrant was CTI ANCOR, the joint venture itself, which is now one of the Respondents in this proceeding. Without acknowledging it, the Complainant has in fact commenced this matter against the Respondents which include the joint venture of which it was once a part.1 As discussed below, this becomes problematic in the analysis of legitimate interests. The pleaded foundation for this complaint is the Settlement Agreement, and specifically the terms relating to the use of the CTI trademark. Analytically, this presents a threshold problem for the Complainant, because the Agreement itself does not on its own establish the existence of relevant trademark rights in the hands of the Complainant.
The Complainant's evidence does not include any proof that it owns registered rights in the trademark CTI in any jurisdiction. The Panel, in conducting its own search of the U.S. Trademarks Office database, confirmed that the Complainant does not own a trademark registration in its local jurisdiction. In the absence of a trademark registration, the Complainant must rely on common law rights in the trademark CTI.
In this respect, the Complainant has proffered virtually no evidence of common law rights in the CTI trademark. The Complainant has made a bald statement that it owns the “name, mark and trademark CTI”, but has not provided any evidence of use, which is essential for establishing such a claim. Panels have previously decided that common law rights must be established, through evidence of sales, promotion and reputation, when a complainant does not own a trademark registration see Baltimore Gas and Electric Company v. National Material Supply Co., LLCWIPO Case No. D2001-0315 and Broadcast America Partnership, Ltd. d/b/a America One Television v. Available DomainsWIPO Case No. D2000-1417. At its highest, the Complainant's trademark rights appear to be based on possible inferences to be drawn from the terms of the Settlement Agreement.
Upon review of all the evidence submitted, the Panel finds that Complainant has failed to establish its alleged rights in the CTI trademark, in a manner sufficient to support this Complaint.
Accordingly, the Panel finds that the Complainant has failed to meets its burden under Paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
As a result of the findings set out above, it is unnecessary for the Panel to make any determination under the second element. However, for completeness, the Panel notes the following:
The Complainant relies principally on the terms of the Settlement Agreement in arguing that it satisfies this element of the Complaint. In the Panel's view, these terms do not unequivocally support the interpretation and conclusions urged by the Complainant. Nothing in the Settlement Agreement appears to require the parties to cease using the domain name; in fact the Settlement Agreement contemplates the continuing operation of the website and use of the domain name in the future, in association with certain with specific content. In the circumstances, it could be open for the Panel to conclude that the Respondent CTI ANCOR had a legitimate interest in registering the domain name in 1998, in furtherance of the joint venture, and that a continuing legitimate interest may have been acknowledged (or at least not explicitly excluded) by the parties even when the joint venture ended.
This Complaint appears to revolve around the issue not of ownership of the domain name but of the content of web pages mandated by the Settlement Agreement. As such, the subject matter principally involves allegations of breach of contractual obligations, which lie outside the jurisdiction of this Panel, and the reach of the Policy itself.
The Panel notes that this dispute may now be brought before the appropriate court, and if so believes that it is prudent to leave the decision on its merits to such a decision maker, with the benefit of a full evidentiary record and the ability to construe and interpret the contractual terms which will ultimately govern this matter. C. Registered and Used in Bad Faith
As a result of the findings set out above, it is unnecessary for the Panel to make any determination on the issue of bad faith. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Dated: February 18, 2009
1 The Panel notes that the Complaint, as originally constituted, did not include CTI ANCOR as a respondent, although that entity was in fact the registered owner of the domain name, as confirmed by the registrar. The Center correctly brought this issue to the attention of the Complainant, and invited the Complainant to add CTI ANCOR as a respondent in the matter. Through its Amended Complaint, filed January 7, 2009, Complainant added CTI ANCOR as a respondent. Although Complainant contends that the registrant of the disputed domain name has no right to use the term CTI ANCOR, CTI ANCOR is the registrar-confirmed registrant of record, and is therefore a necessary party to the current proceedings. This would have been the case even if the Complainant had not elected to amend its Complaint to include CTI ANCOR as a named Respondent.
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