The Complainant is Microsonic Gesellschaft für Mikrotechnik und Ultraschalltechnik mbH of Dortmund, Germany, represented internally.
The Respondent is Alex Rad of Portland, Oregon, United States of America, represented by Miller Nash, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2014. On October 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2014, 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 October 20, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2014. The Response was filed with the Center on November 8, 2014. The Complainant made a supplemental filing out of time on November 28, 2014.
The Center appointed Alistair Payne as the sole panelist in this matter on November 17, 2014. 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 produces ultrasonic sensors for industrial automation and sells through its partners into 90 countries worldwide under its MICROSONIC mark. It owns registered trade mark rights for the MICROSONIC word mark in various countries including in Germany under registration number 39856814 since 1999 and in the United States 4382266 since 2013. The Complainant owns country code Top-Level Domain names (“ccTLD”) in numerous countries incorporating its MICROSONIC mark and operates a website through those domain names.
The Respondent registered the disputed domain name in 1999 in connection with its information technology services company, M LLC which company was registered in the State of Oregon in May 2000 but which ceased trading in 2005. The Respondent has owned the disputed domain name since that date but does not use it. 5. Parties’ Contentions A. Complainant
The Complainant submits that it owns registered trade mark rights for its MICROSONIC mark as noted above and that the substantive part of the disputed domain name is identical to its mark.
The Complainant says that it has not authorised or licensed the Respondent to use its mark and that it thinks that the Respondent is the authorised representative of Microsonic Information Technologies which the Complainant says has not operated since 2005. The Complainant says that the disputed domain name has been for sale at the registrar, GoDaddy, since 2007 and that the Complainant has registered at and visited since that year the registrar’s site with a view to purchasing the disputed domain name.
The Complainant says that neither it nor its North American sales partner have succeeded in contacting the Respondent concerning the sale of the disputed domain name whether by telephone or email and it seems therefore as if the Respondent is preventing the Complainant from acquiring the disputed domain name. The Complainant asserts that this and the Respondent’s non-use amount to bad faith under the Policy. B. Respondent
The Respondent does not dispute the Complainant’s claim that it owns registered trade mark rights in the MICROSONIC mark or that the disputed domain name is confusingly similar to the Complainant’s mark. It notes however that there are multiple concurrent users worldwide of the MICROSONIC name or mark for differing goods and services.
The Respondent submits that it has rights and legitimate interests in the disputed domain name on the following basis:
(a) It registered the disputed domain name in November 1999 (some 15 years prior to receiving notice of this dispute) in connection with a bona fide business (namely M LLC under the trade mark MICROSONIC.COM; and
(b) The Respondent used the disputed domain name for some time in this connection, was known by the disputed domain name and acquired common law rights in it as a consequence of such use;
(c) The Respondent made a legitimate commercial use of the disputed domain name without any intent to divert consumers for commercial gain or to tarnish the Complainant’s trade mark.
The Respondent submits that it originally acquired the disputed domain name in anticipation of commencing its business under the entity M LLC which was subsequently registered in the state of Oregon in May 2000. The Respondent says that it actively ran this business through this entity or after its involuntary dissolution in 2001, as a sole trader, under the business name Microsonic Information Technologies until 2005. It says that originally it had intended to develop a website at the disputed domain name but became too busy to do so and that it was in fact used as an internal mail server. The Respondent notes that during this early period in the development of Internet commerce companies could still be effective with off-line marketing and therefore developing a website was not imperative. The Respondent also notes that its business was completely unrelated to the Complainant’s and that it never attempted to sell the disputed domain name to the Complainant or to anyone else. The Respondent submits that it was rather GoDaddy’s standard rotating sale banners which may have given the Complainant the impression that the disputed domain name was for sale. The Respondent says that it was not aware of the Complainant or its business until October 2014 when it received notice of this Complaint.
Accordingly, the Respondent says that it has neither registered nor used the disputed domain name in bad faith and that the record does not contain any evidence to support the Complainant’s allegations in this regard. The Respondent also notes that it has never received a telephone or email communication in relation to the disputed domain name from the Complainant or its North American sales partner despite its contact details being clearly available in the registration details for the disputed domain name. 6. Discussion and Findings
The Complainant made a late supplemental filing out of time on November 28, 2014. No exceptional circumstances are submitted to justify the delay in making this filing and in the event nothing turns on the additional matters raised. Therefore the Panel exercises its discretion not to admit the filing to the record. A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trade mark rights in the MICROSONIC word mark, in particular in Germany under registration number 39856814 since 1999 and in the United States under registration number 4382266 since 2013. The Panel also finds that the substantive element of the disputed domain name is identical to the Complainant’s MICROSONIC mark. Accordingly, the Complaint succeeds under the first element of the Policy. B. Rights or Legitimate Interests
In the Panel’s view and also for the reasons set out below in relation to bad faith, the Complainant has not successfully made out its case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant acknowledges in the Complaint that the Respondent appears to have been associated with the business name Microsonic Information Technologies that was registered in Oregon in 2003. Its case however is based on the fact that the business name registration was not renewed in November 2005 and that the disputed domain name is not currently used and does not appear to have been used since then.
The Complainant does not appear to have been aware as set out in the Response that the Respondent registered the disputed domain name in 1999 in anticipation of operating a business through a company which the Respondent subsequently registered as M LLC. The Respondent has provided documentary evidence of the registration of this company in May 2000 and of its subsequent operation until it was dissolved by the State of Oregon in 2001. After this time the Respondent continued to operate under the business name Microsonic Information Technologies and it has provided by way of evidence numerous documents which in the Panel’s view clearly demonstrate that it operated a bona fide information technology business under this name and used the MICROSONIC or MICROSONIC.COM mark during this period and prior to closure of the business in 2005.
The Respondent has also submitted that although it did not actively develop a website at the disputed domain name it did use the disputed domain name for the purposes of an internal mail server and had intended to develop a website at the disputed domain name but at the time this was not imperative to its business. The Respondent freely admits that it does not currently use the disputed domain name and has not done so since 2005.
In these circumstances the Panel finds that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. It is clear to the Panel that the Respondent did operate a bona fide business for a period of years from 2000 onwards under the MICROSONIC.COM name or mark. Considering the numerous other entities that concurrently appear to provide a wide range of goods or services under the “microsonic” term, in view of the Respondent’s assertion that it was not aware of the Complainant’s business or use of an identical or similar mark when it registered the disputed domain name (and that he asserts that he was not aware of this until receiving notice of this Complaint some fifteen years later) and also considering that the Respondent operated in a quite different field of activity to the Complainant, the Panel finds on the balance of probabilities that the Respondent registered and used the domain name for a bona fide business purpose and has simply maintained the registration of the disputed domain name since that time. The Panel notes the Respondent’s explanation of the sale banner on the GoDaddy website and that there appears to be conflicting evidence concerning whether the Complainant ever made direct approaches to the Respondent through its North American sales agent, or not. Be that as it may, there is nothing to suggest that the Respondent attempted to sell the disputed domain name at an inflated price to the Complainant or anyone else.
In summary it seems to the Panel that there is no reason therefore to doubt the bona fide of the Respondent in relation to its registration, use or current holding of the disputed domain name. Accordingly the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name and the Complaint fails under this element of the Policy. C. Registered and Used in Bad Faith
It follows from the Panel’s discussion above that the Panel does not in any event find that the Respondent registered the disputed domain name in bad faith. As set out above there is considerable evidence before the Panel that the Respondent registered the disputed domain name in 1999 for the purposes of a bona fide business which it subsequently operated under the MICROSONIC.COM name or mark. Taking into account the further circumstances as noted and discussed above, the Panel therefore finds on the balance of probabilities that the Respondent did not register the disputed domain name in bad faith. Accordingly, the Complaint also fails under this element of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Alistair Payne
Sole Panelist
Date: December 1, 2014
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