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and Mediation Center
ADMINISTRATIVE PANEL DECISION
The MITRE Corporation v. Charles W. Bosler Jr.
Case No. D2006-0958
1. The Parties
The Complainant is The MITRE Corporation, Mclean, Virginia, United States of America, represented by Sterne, Kessler Goldstein & Fox, PLLC, United States of America.
The Respondent is Charles W. Bosler Jr., Milford, New Hampshire, United States
2. The Domain Name and Registrar
The disputed domain name <risknav.org>is registered with DSTR Acquisition
PA I, LLC dba DomainBank.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2006. On July 31, 2006, the Center transmitted by email to DSTR Acquisition PA I, LLC dba DomainBank.com a request for registrar verification in connection with the domain name at issue. On August 15, 2006, DSTR Acquisition PA I, LLC dba DomainBank.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on August 17, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2006.
The Center appointed Lynda J. Zadra-Symes as the sole
panelist in this matter on September 22, 2006. 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
Complainant has been using the mark RISKNAV since at least as early as July 15, 1998 with computer programs for use in risk management. Complainant is the owner of U.S. Trademark Registration No. 2,235,092 for the mark RISKNAV for use in connection with computer programs for use in risk management. Complainant inadvertently failed to file a timely Declaration of Use under Section 8 of the U.S. Trademark Act, and its registration was canceled from the USPTO Principal Register on December 31, 2005. Complainant re-filed for federal registration of the RISKNAV mark on February 2, 2006 (Serial No. 78/805,851), alleging a date of first use in commerce of July 15, 1998.
The Risknav computer program is currently deployed throughout the intelligence community, the Electronic Systems Center of the U.S. Air Force, the Federal Aviation Authority and other sponsors of Complainant, and is licensed for use by private enterprises.
On November 10, 2004, Complainant and Respondent entered into a non-exclusive License Agreement allowing Respondent to use, modify and sub-license the Risknav computer program. Excerpts from the License Agreement are reproduced below:
3.1 MITRE grants to Licensee a fully paid-up, perpetual, nonexclusive royalty-free license to the Licensed Materials as provided below. Licensee shall have the following rights and be subject to the following restrictions with respect to Licensed Materials:
3.1.1 Licensee may use and modify the Software and merge or combine the Software or any part thereof into or with other computer program material to form an updated or Derivative Work.
5.2 All Derivative Works (in both source code and object code form) shall be owned by Licensee.
9. Publicity and Acknowledgement:
Licensee shall, in all documentation, advertising, websites, presentations or other public releases about any products or applications that contain or use the Licensed Materials, identify MITRE as the creator of RiskNav. Licensee shall do so by placing the “MITRE Technology Applied” logo and the following or similar acknowledgement: “This system incorporates elements of RiskNAV® developed by The MITRE Corporation on behalf of [sic] U.S. Government.” MITRE and RiskNav are registered trademarks of The MITRE Corporation. Licensee shall not use RiskNav, the names of The MITRE Corporation, MITRE, nor any adaptation thereof except as described above without the prior written consent of MITRE.”
Respondent registered the domain name on November 19, 2004, shortly after entering the License Agreement with Complainant.
In November 2005, Complainant learned that Respondent had registered the domain name <risknav.org> and was using RISKNAV and other marks and logos of Complainant in content on the website located at the domain name.
On May 1, 2006, Complainant sent a letter to Respondent stating that Respondent’s use of the RISKNAV mark for its product and Respondent’s use and registration of the domain name <risknav.org> violated the terms of the License Agreement and demanded that Respondent cease use of the RISKNAV mark and transfer ownership of the domain name to Complainant within 30 days. Complainant received no response to its letter, and Respondent apparently took no action to comply with the demands made in Complainant’s letter.
On June 13, 1006, Complainant sent a second letter
to Respondent stating that Complainant was terminating the License Agreement
based on Respondent’s continued non-compliance with Section 9 of the Agreement.
Complainant has received no response to either of its letters.
5. Parties’ Contentions
Complainant contends that:
1. The domain name <risknav.org> is identical to Complainant’s RISKNAV mark because the domain name consists solely of the RISKNAV mark and comprises no other terms, letters, numbers or symbols.
2. Respondent never sought consent to register the domain name RISKNAV from Complainant.
3. While Respondent was permitted and required to use RISKNAV and certain other marks and logos of Complainant in all documentation, advertising, websites, etc. for the RISKNAV computer program, the License Agreement did not provide Respondent with the right to register Complainant’s RISKNAV mark as a domain name, nor to use the RISKNAV mark as its own mark or as an identifier of source for any derivative product developed by Respondent, but based on Complainant’s RISKNAV computer program.
4. Respondent uses the RISKNAV mark as if it is its own mark, and without acknowledgement to Complainant.
5. Respondent has no rights or legitimate interests in the domain name. Respondent is not now, nor has he or his company ever been commonly known by the RISKNAV mark or the <risknav.org> domain name.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Complainant has established that it owns trademark rights in the mark RISKNAV.
The domain name incorporates the RISKNAV mark in its entirety. There can be no question that the domain name is identical to the Complainant’s mark.
B. Rights or Legitimate Interests
The Panel finds that Complainant has failed to meet its burden of proof in showing that Respondent lacks any rights or legitimate interest in respect of the domain name.
Paragraph 4(c)(i) of the Policy provides that a use is legitimate if, prior to commencement of the dispute, Respondent used the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services. Here, there is no dispute concerning Respondent’s status as a licensee of Complainant. Complainant has terminated the license on the grounds that Respondent has registered the domain name, allegedly in violation of the License Agreement.
However, Complainant does not point to any provision in the License Agreement expressly prohibiting Respondent’s use of the mark RISKNAV in a domain name. Moreover, the License Agreement permits the Respondent to:
“identify MITRE as the creator of RiskNav. Licensee shall do so by placing the ‘MITRE Technology Applied’ logo and the following or similar acknowledgement: “This system incorporates elements of RiskNAV® developed by The MITRE Corporation on behalf of [sic] U.S. Government.”
The Annexes to the Complaint indicate that Respondent’s website displayed this language and the “MITRE Technology Applied” logo, in compliance with the License Agreement.
In addition, Complainant’s own press release acknowledges Respondent’s statement that the RiskNav® product was being added “to [Respondent’s] line of risk management products and services. . . . ” Thus, Complainant was well aware that Respondent would be offering other risk management products not provided by Complainant when it entered into the License Agreement with Respondent.
The record indicates that Respondent’s use of the domain name is in connection with the bona fide offering of goods and services, including the licensed RiskNav® product and derivative works thereof. Complainant has made no allegation that Respondent has registered other domain names incorporating Complainant’s marks or that Respondent has improperly communicated with Complainant’s customers. Complainant has not presented any evidence that undermines the bona fide’s of Respondent’s use.
Accordingly, the Panel finds that the Complainant has failed to establish that the Respondent lacks a legitimate interest in using the Domain Name to reflect and promote its business as a licensee of Complainant.
This finding is without prejudice to any subsequent proceedings that may be brought by either party in relation to the subject of dispute. The Panel notes that disputes of this nature involving detailed questions of trademark licensing rights may in any case appropriately be resolved through the Courts.
C. Registered and Used in Bad Faith
In light of the above finding that Complainant has failed to establish that
Respondent has no rights to or legitimate interest in the domain name, it is
unnecessary for the Panel to reach this third factor. That said, the panel notes
that the record discussed above does not support, and appears to be contrary
to, Complainant’s allegations of bad faith.
For all the foregoing reasons, the Complaint is denied.
Lynda J. Zadra-Symes
Dated: October 6, 2006