The Complainant is Stratx of Paris, France represented by Edwards Angell Palmer & Dodge LLP of United States of America.
The Respondent is Antonio Lucena de Faria of Oeiras, Portugal. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with GoD, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2011. On May 13, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2011, 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.
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 May 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2011. The Response was filed with the Center on June 7, 2011.
The Center appointed Tony Willoughby as the sole panelist in this matter on June 14, 2011. 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 is engaged in the provision of educational services directed primarily to the development of business leadership skills and strategic thinking. Its tagline is “Strategic Excellence in Action”. It has been trading under the STRATX name since 1985. It is the registered proprietor of various service/trade mark registrations featuring its name STRATX (some in stylized form), one of them being United States registration no. 1,607,708 filed March 16, 1987 (registered July 24, 1990) STRATX (word) in class 41 for a wide variety of goods and services in the areas of business simulation software and business management educational seminars.
In 1996 the Complainant registered the domain name, , and in 1999 it registered the domain name, .
The Respondent is the Chairman of the Board of Directors of the Portuguese corporation Emethodus Informatica Lda. (“Emothodus”). Emothodus is engaged in broadly the same area of business as the Complainant, namely the provision of educational services and directed to business management. Its stated mission is “to help companies that are having difficulties in defining, communicating and implementing their strategy.”.
Emethodus is the proprietor of Portuguese trade mark registration no. 451589 dated July 7, 2009 (registered September 28, 2009) mySTRATEX.com (stylized) for games and services relating to the arranging and conducting of conferences.
Emethodus is also the registered proprietor of International registration no. 1,038,055 dated January 6, 2010 mySTRATEX.com (stylized) in class 28 for board games and in class 41 for arranging and conducting of conferences. This registration is based upon the Portuguese registration and has the July 7, 2009 priority date.
The Domain Name was registered on March 21, 2009. It was originally held in the name of a privacy service, but prior to the launching of the Complaint, the privacy service identified the Respondent as being the underlying registrant.
On July 14, 2009 the Respondent filed an application for registration of mySTRATEX.com as a trade mark with the United States Patent and Trademark Office for board games. The Complainant opposed the application by way of a Notice of Opposition dated September 9, 2010. The mark was provisionally refused by the United States Patent and Trademark Office on the basis of likelihood of confusion with the Complainant’s prior registration. The Respondent failed to respond to the Office action and on January 5, 2011 a default judgment was issued in favour of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its STRATX trade/service mark. The Complainant further contends that the Respondent registered the Domain Name knowing of the Complainant’s trade/service mark rights and with the intention of taking unfair commercial advantage of those rights. Under those circumstances the Respondent’s registrations of mySTRATEX.com cannot give rise to rights or legitimate interests for the purposes of paragraph 4(c) of the Policy. The Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent denies all the Complainant’s allegations. Significantly he denies all knowledge of the Complainant and its trade/service mark rights prior to receipt of the Complainant’s Notice of Opposition dated September 9, 2010 (see section 4 above). He contends that he registered the Domain Name on behalf of his company, Emethodus, being the name he had given to a business board game, which he proposed to sell over the Internet. He contends that his trade/service mark registrations give him the relevant rights and that there is no evidence against him of bad faith registration and use, nor can there be given the fact that he had no knowledge of the Complainant at the relevant time. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises (a) STRATEX, a confusingly similar variant of the Complainant’s STRATX trade/service mark (b) the pre-fix “my”, which is of little significance in terms of overall distinctiveness of the name and (c) the generic ‘.com’ suffix which may be discounted when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy.
The Respondent argues that there is no scope for any confusion given the fact that 6 extra characters need to be added at the ends of the name to arrive at the Domain Name and there is little chance of anyone doing that. In putting it thus, the Respondent ignores the risk of visual confusion and it is to be noted that the Respondent uses the Domain Name as a trade mark in a form which accentuates the “Stratex” element of the Domain Name (i.e. with the 6 extra characters in lower case and STRATEX in upper case).
The Panel finds that the Domain Name is confusingly similar to a trade mark or service mark in which the Complainant has rights. C. Rights or Legitimate Interests
At the time of the filing of the Complaint the Complainant was aware of the Respondent’s trade/service mark registrations the details of which are set out in section 4 above. The Complainant contends that the rights afforded by those registrations should be ignored on the basis that they were obtained in bad faith. The Complainant contends that those registrations were applied for with knowledge of the Complainant’s rights and with intent to take unfair advantage of those rights.
In support of its contention the Complainant cites Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "M" (WIPO Case No. D2000-0847). In that case the relevant contentions of the respondent and the panel’s findings in relation thereto are set out in the following passage from the decision:
“First, Respondent contends that its use of the domain name for an adult entertainment web site involved prior use of the domain name in connection with a bona fide offering of goods or services. The record supports Respondent’s claim that it used the domain name in connection with commercial services prior to notice of the dispute. However, Respondent has failed to provide a reasonable explanation for the selection of Madonna as a domain name. Although the word “Madonna” has an ordinary dictionary meaning not associated with Complainant, nothing in the record supports a conclusion that Respondent adopted and used the term “Madonna” in good faith based on its ordinary dictionary meaning. We find instead that name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondent’s web site by trading on the fame of Complainant’s mark. We see no other plausible explanation for Respondent’s conduct and conclude that use which intentionally trades on the fame of another can not 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 that is obviously contrary to the intent of the Policy.
Second, Respondent contends that it has rights in the domain name because it registered MADONNA as a trademark in Tunisia prior to notice of this dispute. Certainly, it is possible for a Respondent to rely on a valid trademark registration to show prior rights under the Policy. However, it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. If an American-based Respondent could establish “rights” vis a vis an American Complainant through the expedient of securing a trademark registration in Tunisia, then the ICANN procedure would be rendered virtually useless. To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.
Here, Respondent admits that the Tunisia registration was obtained merely to protect his interests in the domain name. Respondent is not located in Tunisia and the registration was not obtained for the purpose of making bona fide use of the mark in commerce in Tunisia. A Tunisian trademark registration is issued upon application without any substantive examination. Although recognized by certain treaties, registration in Tunisia does not prevent a finding of infringement in jurisdictions outside Tunisia. Under the circumstances, some might view Respondent’s Tunisian registration itself as evidence of bad faith because it appears to be a pretense to justify an abusive domain name registration. We find at a minimum that it does not evidence a legitimate interest in the disputed name under the circumstances of this case.”
For the first point to apply here, the Panel has to be satisfied at the very least that the Respondent’s denial of prior knowledge of the Complainant is to be disbelieved. The Panel addresses this issue under the next head. As to the second point, it is not apposite to equate the Tunisian trade mark system with the systems applicable to Portuguese and International registrations. For the Panel to ignore the rights clearly afforded by the Respondent’s Portuguese and International registrations, the Complainant must produce very strong evidence to show that the Respondent’s intentions from the outset were mala fide. The fact that the Complainant does not appear to have taken any steps to have the Respondent’s Portuguese and International registrations set aside or to have any plans to do so renders it virtually impossible for the Panel to ignore them.
However, the evidence produced by the Complainant in support of its contentions as to bad faith registration and use of the Domain Name is set out and dealt with under the next head. D. Registered and Used in Bad Faith
The Complainant’s contentions under this head are based on the allegations that the Respondent knew of the Complainant’s trade mark and service mark rights when he first adopted the name for his business training board game (March 2009) and intended to take unfair commercial advantage of those rights (paragraph 4(b)(iv) of the Policy). The Respondent denies all knowledge of the Complainant and its rights prior to receipt of the Complainant’s Notice of Opposition dated September 9, 2010 in respect of the Respondent’s United States trade mark application.
The Complainant contends that the Respondent knew of the Complainant’s prior rights at all relevant times. It bases its contention on the following facts and matters:
(i) The Complainant and the Respondent are in broadly the same line of business. There appears to be no dispute between the parties on this point, save that the Respondent contends that there are a number of differences between the companies, their products, their service offerings and their markets. The Panel makes no finding on the points raised by the Respondent. However, on its own, the fact that the parties are in the same line of business takes the Complainant nowhere.
(ii) The Complainant’s STRATX services had been promoted in Portugal in Spain and the Respondent would have become aware of those services through the Complainant’s many educational and institutional clients in those countries (and throughout Europe) including Universidade Catholica Portugese, the university which the Respondent attended and the university whose students make up Emethodus’ internship programme. The Respondent points out that he was at the university from 1977 to 1983 and the Complainant’s name was not then in existence. He denies that he ever came into contact with any service offering of the Complainant. The Panel notes that the Respondent does not comment on the allegation that he would have picked up information from the students attending his internship programme. However, that does not help the Complainant because the internship programme is unlikely to have commenced prior to the Respondent’s adoption of the name.
(iii) The Respondent noted the Complainant’s concept of providing training services by way of an electronic game and adapted that concept simply by providing the same services by way of a board game and undercutting the Complainant’s price. The Complainant points out that it once promoted its concept by an image of dice “similar to the board game that Respondent chose to mimic”. The Respondent responds correctly that if the Complainant ever produced a board game, there is no evidence of it in the papers before the Panel. If the Complainant’s case is that the image of dice directed the Respondent to creation of a board game, the Panel is not impressed by the argument. It takes the Complainant nowhere.
(iv) In promoting the game the Respondent highlights the STRATEX element of the name, the element closest to the Complainant’s trade mark. The Respondent produces substantial evidence to the effect that STRATEX is widely in use by a very large number of entities and indeed appears to be a registered trade mark of another entity altogether in the United States. He says that he selected it as a short form of “Strategic Expenditures” along the lines of CAPEX and OPEX. It was an expression which he first came across in a book entitled “The Execution Premium”, which covered the concept of the Balanced Scorecard. His board game is based upon that concept. This, on its face, seems to the Panel to be a reasonable explanation.
(v) The Respondent applied for the Domain Name before he applied for the trade mark registrations. The Panel finds this a somewhat extraordinary point to make. The trade mark is the Domain Name. What on earth would be the point of applying to register it as a trade mark prior to securing it as a domain name?
(vi) The Respondent’s website is in English and does not target Portuguese consumers. The Respondent does not answer this point. However, the Panel notes that the Respondent clearly intended to market to English-speaking people (note the English and US trade mark applications). Moreover, if one were promoting a product to the international business community, English would be a prime choice of language.
(vii) The Respondent’s website mimics the colour scheme and general appearance of the Complainant’s website. The Respondent does not answer this point. The Panel has examined the Complainant’s evidence and notes similarities, but they seem to the Panel to be similarities which one might expect of two websites both offering executive training services by way of games. The games are different, but they appear to be directed to much the same end-result. As to similarities in appearance, they do not seem to the Panel to be so obvious as to enable one to conclude that one is a copy of the other
(viii) The Respondent used a privacy shield when registering the Domain Name and did not volunteer his information when it was requested of him by the Registrar. The Respondent responds that he selected a privacy shield provided by the Registrar with a view to shielding his email address from spam. He has produced evidence to show that he informed the Registrar that he had no objection to information about him being disclosed to the Complainant. The Panel observes that in light of the background history (see section 4 above) the Complainant cannot have been in any serious doubt as to the identity of the underlying registrant and that in any event the Complainant was not materially inconvenienced. While it is true that the website makes no mention of the Respondent or his company, the trade mark registrations featuring the Domain Name identify the Respondent as being the representative of his company.
(ix) “In addition to registering the domain name in bad faith, Respondent had actual knowledge of Complainant’s right to STRATX when it [sic] renewed the Domain Name in March 2010.” This adds nothing unless the evidence supports the proposition that the Respondent is not telling the truth when he says that he was unaware of the Complainant or the Complainant’s rights prior to September 2010.
Having reviewed the totality of the evidence, the Panel is not persuaded that the Respondent has no rights or legitimate interest in respect of the Domain Name. There is insufficient evidence before the Panel to enable the Panel to (a) reject the Respondent’s denial of all knowledge of the Complainant and its rights prior to September 2010 and (b) declare that for the purposes of paragraph 4(c) of the Policy the trade mark rights afforded to the Respondent and/or his company by the Portuguese and International trade mark registrations are to be ignored.
None of the evidence produced by the Complainant (whether taken individually or in combination) is sufficient to satisfy the Panel that the Domain Name was registered and is being used in bad faith.
As a general comment, the Panel suggests that where (as here) a respondent has trade/service mark registrations covering the domain name in issue and an established business operating through a website connected to that domain name, which is consistent with the domain name, panels are likely to be most reluctant to destroy that business by depriving the registrant of the domain name in the absence of strong evidence of bad faith. Here, of course, the Domain Name is also a trading name of the Respondent and the brand name of the Respondent’s product. Additionally, if the evidence is sufficiently strong to deal with the Domain Name, it ought to be sufficiently strong to support an attack on the respondent’s trade/service mark registrations. Here, the Complainant does not appear to have made any attempt to have the Respondent’s trade mark registrations expunged nor has it given any indication that it plans to do so.
If there is a serious issue, which remains to be resolved, it should be taken up in a different forum. This is not a case for the UDRP. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Dated: July 1, 2011
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