WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Applied Technology Holdings, Inc. v. u-Logic, Dan Stirling Case No. D2010-0042 1. The Parties
Complainant is Applied Technology Holdings, Inc. of Laguna Niguel, California, United States of America, represented by the law firm Knobbe, Martens, Olson & Bear, LLP, United States of America.
Respondent is u-Logic, Dan Stirling of Mission Viejo, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with DSTR Acquisition. I, LLC d/b/a 000D. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2010. On January 12, 2010, the Center transmitted by email to DSTR Acquisition. I, LLC d/b/a 000D a request for registrar verification in connection with the disputed domain names. On January 12, 2010, DSTR Acquisition. I, LLC d/b/a 000D transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on January 14, 2010. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on January 15, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2010. On January 13 and 14, 2010, the Center received informal email communication from Respondent. Respondent did not submit a formal Response.
The Center appointed Richard G. Lyon as the sole panelist in this matter on February 12, 2010. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his 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
Complainant was established under its present name in 2005. It provides hardware and software for wireless body motion monitoring systems for medical, sports, military, and other applications. Complainant does not claim ownership of any registered trademark.
Respondent is an entity controlled by Dan Sterling, an individual who from October 2005 through July 2009 served as an officer and director of Complainant. Respondent's communications with the Center and the exhibits submitted with the Complaint indicate that Complainant and Respondent (or Mr. Sterling) have several matters in dispute in addition to entitlement to the disputed domain names. These sources also make plain the fact that Complainant and Respondent are competitors.
Mr. Sterling registered the disputed domain names in October 2005, shortly after joining Complainant. He registered them in Respondent's name. Initially the disputed domain names were used to promote and market Complainant and its products, but after Mr. Sterling's separation from Complainant he modified the websites so that an Internet user who entered them into his browser was immediately re-directed to Respondent's website for one name and to a page with no content for the other. When the Panel attempted to access the disputed domain names he was unable to access any content, though one of the disputed domain names did immediately re-direct him to Respondent. 5. Parties' Contentions A. Complainant
Complainant contends as follows:
Complainant has common law rights in its corporate name by virtue of its use of that name in commerce for several years. A common law trademark suffices for purposes of the Policy, paragraph 4(a)(i). The disputed domain names are identical to this mark except for the generic top-level domains, which are irrelevant in evaluating identity or similarity.
Complainant never licensed Respondent to use its trademark, and Respondent has never been commonly known by the disputed domain names. The uses to which Respondent has put the disputed domain names are not legitimate under the Policy.
Respondent's conduct constitutes bad faith under three of the examples in paragraph 4(b) of the Policy. Its registration of the two disputed domain names prevents Complainant from using its own name for a domain name and constitutes the pattern of conduct required by paragraph 4(b)(ii) of the Policy. As Complainant's competitor its redirection to Respondent's site comes within paragraph 4(b)(iii) of the Policy and demonstrates an attempt to mislead consumers seeking Complainant into the source, sponsorship, or ownership of the websites, as condemned by paragraph 4(b)(iv) of the Policy. Furthermore, taking advantage of his position as an officer and director of Complainant to register domain names that included the company's name is itself bad faith.
Noting that Respondent registered the disputed domain names prior to the date Complainant claims trademark rights in its name, Complainant argues that Respondent comes within the proviso in paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview)1 by reason of his insider status at the company. B. Respondent
The Panel will treat Respondent's email messages referred to above as the Response, and describes Respondent's contentions as follows:
“As a founding partner in [Complainant] and an investor I registered the domain name under my corporation name [Respondent] because this entity would be paying for the registration fee's. (sic)”
Complainant “abandoned” the disputed domain names.
Because this dispute and others between the parties involve “intellectual property ownership rights” the matter is not appropriate for resolution under the Policy and should be left to the courts. 6. Discussion and Findings
No facts and few issues are contested in this proceeding. The disputed domain names are identical to Complainant's corporate name, and Complainant has provided sufficient evidence to demonstrate common law trademark rights in that name to invoke the Policy. Respondent's present use of the disputed domain names, to divert Internet users to a site offering products competitive to the mark owner's, is clear bad faith. Respondent, then an officer and director of Complainant, was fully aware of Complainant and its business when it registered the disputed domain names, a fact that makes it irrelevant whether Complainant had acquired trademark rights at that time.2 Complainant has never licensed Respondent to use its name. Unless Respondent can demonstrate a right or legitimate interest in the disputed domain names, all Policy elements are satisfied.
Respondent argues that its paying for registration and renewal of the disputed domain names creates such a right. That might be true if Respondent could show that Complainant authorized or assented to that arrangement. Respondent offers no proof of (indeed does not allege) such authority, nor any proof that Complainant was even aware of its registration of them in Respondent's rather than Complainant's name at any time during his service as Complainant's officer and director.3 As a fiduciary of Complainant in 2005 Respondent owed Complainant an opportunity to retain or acquire any asset clearly corporate in nature, as a domain name that incorporates the company's name self-evidently is. Without express consent to the contrary, Mr. Sterling's registration of the disputed domain names in anything other than his beneficiary's name was thus made in bad faith.
Respondent's claim that Complainant “abandoned” the disputed domain names similarly has no evidence to support it.
Respondent asserts that the pendency of other disputes between the parties makes litigation preferable to this Policy proceeding. Paragraph 18(a) of the Rules4 empowers the Panel to stay or dismiss this administrative proceeding due to pending “legal proceedings” between the parties,5 and there are occasions when a panel ought not to transfer a domain name when that is but one part of a broader business dispute between the parties. See, e.g., Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith,WIPO Case No. D2007-1033; Greyson International, Inc. v. William Loncar,WIPO Case No. D2003-0805. Neither of these principles aids Respondent here. For one thing, neither party has advised the Panel of the existence of the predicate “legal proceedings,” though each has the obligation under Rule 18(b) to do so. All the parties have identified are unspecified “disputes.” The rationale of the latter line of cases rests on the panel's inability to grasp the facts underpinning the broader dispute, which often underlie the dispute over the domain name as well, and on the panel's reluctance to grant an advantage to one side or the other in an identified dispute in which other remedies, such as an injunction or money damages, are sought. Here not only is there no pending litigation or other remedy mentioned by either party, but also the Complaint frames only the dispute over entitlement to the disputed domain names, in terms falling expressly within the four corners of the Policy. As in the Bittorrent case cited above (in which a lawsuit was pending), it is appropriate for the Panel to proceed to a decision. That this Panel shall proceed to do. 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 domain names, and be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Dated: February 17, 2010
1 “However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant's potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant's enterprises.”
2 See, e.g., Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino,WIPO Case No. D2007-0416; Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro d/b/a Weber's Mackinac Island Florist,WIPO Case No. D2001-0653.
3 Complainant alleges, and Respondent does not deny, that it requested registration of the disputed domain names in Complainant's name.
4 “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
5 When acknowledging Respondent's communications the Center's case manager specifically reminded Respondent of this Rule.
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