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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compiere Inc. v. James Zhong

Case No. D2007-0130

 

1. The Parties

The Complainant is Compiere Inc., Santa Clara, California, United States of America, represented by DLA Piper US LLP, United States of America.

The Respondent is James Zhong, of Shenzhen, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <mycompiere.org> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2007. On February 1, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 1, 2007, Go Daddy Software 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, and technical contact. In response to notifications by the Center that the Complaint was administratively deficient, the Complainant filed amendments to the Complaint on February 9, 2007 and February 15, 2007. The Center verified that the Complaint together with the amendments to 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 February 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2007.

The Center appointed Ian Blackshaw as the sole panelist in this matter on March 20, 2007. 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

Founded in 2000, the Complainant has become a leading provider of open-source Enterprise Resource Planning (ERP) and Customer Relationship Management (CRM) software applications for small-to-medium sized enterprises, and related technology services, covering all areas from customer management and supply chain to accounting.

The Complainant’s Compiere software program is used by companies around the globe, and copies of the Compiere program have been downloaded over 1,000,000 times. In addition, the Complainant has a global network of partners who support its Compiere program by joining the Complainant Partner program and receiving training from the Complainant on providing implementation, integration and IT services for the Compiere program. Printouts from the Complainant’s website at “www.compiere.com” have been provided to the Panel.

The Complainant has also sought to formally protect the COMPIERE trademark. The Complainant owns a U.S. federal trademark registration for the mark COMPIERE for “e-commerce software to allow users to perform electronic business transactions via a global computer network” which was filed in 2000. The Complainant also obtained a U.S. federal registration for the mark COMPIERE SERVICE. Copies of records from the United States Patent and Trademark Office database in connection with these registrations have been provided to the Panel.

In addition, in 2004, the Complainant filed an International Registration for the COMPIERE trademark under the Madrid Protocol system (International Reg. No. 843550). The International Registration has been extended into or registered in over sixty (60) jurisdictions around the world including: Albania, Austria, Australia, Benelux (Belgium, Netherlands, Luxembourg), Bulgaria, Bhutan, People’s Republic of China, Croatia, Czech Republic, Denmark, Estonia, European Union (CTM), Finland, France, Germany, Greece, Hungary, Iceland, Iran, Ireland, Italy, Japan, Kenya, Latvia, Liechtenstein, Lithuania, Netherlands, Norway, Poland, Portugal, Romania, the Russian Federation, Slovak Republic, Slovenia, Republic of Korea, Spain, Switzerland, Turkey, Ukraine and Yugoslavia. The Complainant also owns a trademark registration for the COMPIERE mark in Hong Kong, SAR of China. A printout from a SAEGIS Trademark Report showing the Complainant’s International Registration for the trademark COMPIERE, as well as a printout from the Hong Kong, SAR of China trademark database showing the COMPIERE registration has been provided to the Panel.

The Complainant registered the domain name <compiere.com> in 2000 and has used the domain name to operate a website continually since that time to promote and make available its Compiere software solutions. The Complainant also registered the domain name <compiere.org> in 2002. The trademark COMPIERE is prominently featured on the Complainant’s website. Selected printouts from the Complainant’s websites have been provided to the Panel.

The Complainant’s initial trademark filing, its use of the COMPIERE marks, and its registration of the domain names <compiere.com> and < compiere.org> were all done before the Respondent registered the disputed domain name.

In addition, the COMPIERE mark is unique. A search of all available trademark databases on Thomson’s Saegis database – a widely used commercial trademark database which covers the United States, Canada, virtually all European nations, including the United Kingdom and European Union Community Trademarks (CTM), International Registrations, Australia, Japan and Republic of Korea – shows only two other trademark applications that even use the term “compiere” (both of which appear to be in reference to the Complainant’s products, and which are objectionable as they were filed after the Complainant’s applications and/or registrations). A printout from the SAEGIS Trademark database showing these two marks has also been provided to the Panel. Similarly, a search of the Hong Kong, SAR of China trademark database at “http://ipsearch.ipd.gov.hk/tmlr/jsp/main.jsp” did not reveal any other companies that have applied to register the mark COMPIERE or any mark containing the term COMPIERE.

The COMPIERE mark has become widely-known in the open source community. Again, the Complainant’s COMPIERE program has been downloaded over 1,000,000 times, and numerous articles have been written about the Complainant or make reference to the Complainant and its leading open source application, including in industry and trade publications (online and print) such as InfoWorld, CRM Today, ComputerWorld, The Age (Australia), and Business Week Online. In addition, the Complainant has issued numerous press releases that have been distributed by leading wire services such as Business Wire. In short, it is indisputable that the Complainant is the exclusive owner of the COMPIERE trademark.

Furthermore, the Complainant has licensed selected technology companies to promote and provide support to the Compiere software. While the Compiere solution is open source software and is available to download for free, the Compiere software is backed by professional training, services, documentation, and a vibrant, responsive and knowledgeable worldwide open source community. Notably, the Complainant has a network of partners worldwide that provide implementation, support, training and related services to Compiere end users. The Complainant has these partners undergoing training to familiarize themselves with the Compiere solutions, and partners must also sign a Partner Agreement, which strictly controls partners’ rights to use the mark COMPIERE and domain names. The Complainant has created and owns detailed training manuals, user documentation and related materials for the Compiere software. The Complainant’s training materials are protected by copyright, and the Complainant and its founders own several copyright registrations in these materials. The Complainant sells its training materials through training seminars that the Complainant conducts for partners or others who pay the required training fees. The Complainant’s user documentation is sold through the Complainant’s web store.

On May 3, 2006, the Complainant’s counsel sent a cease and desist letter to the Respondent in which counsel demanded that the Respondent cease use of the disputed domain name and transfer it to the Complainant. The Respondent did not reply.

Documentary evidence in support of all the above statements, claims and matters has been provided to the Panel, including a declaration made by Kathleen Pink, the co-founder of the Complainant, dated January 18, 2007, and a declaration made by Eugene Pak, counsel to the Complainant, dated January 25, 2007.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

A1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(Policy, paragraph 4(a)(i), Rules, paragraphs 3(b)(viii), (b)(ix)(1))

The disputed domain name is virtually identical to and confusingly similar to the Complainant’s trademarks including the federally registered COMPIERE and COMPIERE SERVICE trademarks as well as the Compiere Logo (the “Compiere Marks”).

As described above, the Complainant owns statutory and common law rights in the Compiere Marks by virtue of its extensive use of these marks in interstate and foreign commerce and by virtue of its registrations and applications for these marks in the United States and numerous countries around the world.

There is no real difference between the Complainant’s COMPIERE trademark and the disputed domain name. The addition of the generic, descriptive, and/or non-distinctive term “my” is not a sufficiently distinguishing feature. Other panels have held that the addition of “my” to a mark in a domain name is not sufficient to avoid confusion. See Herbalife International of America v. myherbalife.com, WIPO Case No. D2002-0101 (finding <myherbalife.com> confusingly similar to HERBALIFE); see also Sony Kabushiki Kaisha v. Sin, WIPO Case No. D2000-1007 (finding <mysony.com> confusingly similar to SONY).

Moreover, it is well established that the addition of merely descriptive or non-distinctive matter to another’s mark is not sufficient to avoid confusion. See, e.g., NCAA v. Mark Halpern, WIPO Case No. D2000-0700 (addition of “tickets” and “ticketsforsale” to complainant’s mark held insufficient to avoid confusion); The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc., WIPO Case No. D2004-0947 (addition of “tickets” to complainant’s ORANGE BOWL mark held insufficient to avoid confusion when respondent was offering tickets for sale). Clearly then, there is a likelihood of confusion and infringement caused by the Respondent’s registration and use of the disputed domain name.

The similarity of the disputed domain name to the COMPIERE Marks, and the confusion created thereby, is further exacerbated by the fact that many companies, particularly software companies, use the word “my” with their trademarks and corresponding domains. See, e.g., <mysap.com> used and registered by German software company SAP; MY YAHOO! registered by Yahoo!; <myoracle.com> domain owned and used by Oracle software company Consumers who visit the <mycompiere.org> website – which is branded as <mycompiere.com> -- might mistakenly believe that they are visiting the Complainant’s site, or a site affiliated with or endorsed by the Complainant.

Furthermore, as discussed in more detail below, the infringing <mycompiere.org> site also purports to sell COMPIERE branded training materials. These materials are direct copies or unauthorized derivative works of the Complainant’s own copyrighted materials. Such COMPIERE branding and blatant copying would also tend to exacerbate the confusion caused by the Respondent’s use of “compiere” within the disputed domain name.

In short, there can be no question that the disputed domain is on its face confusingly similar to the Complainant’s COMPIERE Marks; that this confusion is exacerbated and heightened by the content on the “www.mycompiere.org” site; and that the Respondent has intentionally tried to create such confusion in bad faith.

A2 The Respondent has no rights or legitimate interests in respect of the domain name;

(Policy, paragraph 4(a)(ii), Rules, paragraph 3(b)(ix)(2))

The Respondent cannot establish any legitimate rights in the term “Compiere” and the corresponding domain name. The Complainant is the rightful owner of the COMPIERE trademark. The Respondent is simply trying to trade off of the goodwill created by the COMPIERE trademark. The Respondent is not simply referring to the Complainant to identify a program or a company, but rather is trying to appear to be the Complainant itself or to be an authorized affiliate of the Complainant, which the Respondent is not. Again, as noted above, the disputed domain name website not only uses the COMPIERE mark liberally, but also contains information at the bottom of the home page and each subsequent page stating that “Compiere™ is a registered trademark of ComPiere, Inc.”

Moreover, the disputed domain name website sells only purported “Compiere” training materials. These materials are copied or derived from the Complainant’s own copyrighted proprietary training material, and infringe the Complainant’s copyright, as further discussed below.

Furthermore, the Respondent never sought or obtained a license from the Complainant to use the COMPIERE trademark or the disputed domain name, nor has the Respondent attempted to file any trademark applications for the mark COMPIERE in connection with any goods or services, as a legitimate mark owner would. And even if the Respondent had done so, such applications would be clearly objectionable since the Complainant is the owner of the COMPIERE mark. The Respondent’s complete lack of any registration and lack of even an attempt to register such rights in the COMPIERE name demonstrates that the Respondent, in fact, has no legitimate rights in the COMPIERE mark and the disputed domain name. See, e.g., Ronson Plc v. Unimetal Sanayi, WIPO Case No. D2000-0011; see also Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1052 (9th Cir. 1999) (the mere registration of a domain name does not confer any trademark rights on the registrant).

A3. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The UDRP policy sets forth four non-exclusive and non-exhaustive factors that the Panel may examine to determine whether the Respondent has registered or used a domain name in bad faith. These are whether:

(i) the domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name; or

(ii) the domain was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration; or

(iii) the domain was registered primarily to disrupt the business of a competitor; or

(iv) by using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.

A complainant need not show bad faith under all four of these factors, but need only show bad faith as to one. Under these criteria, the Respondent has clearly registered or used the disputed domain name in bad faith, and the domain name should be transferred to the Complainant. In particular, the Respondent’s bad faith is established under each of factors 2 through 4.

a. The Domain Name Was Registered To Prevent the Complainant From Using It, and Respondent Has Engaged In A Pattern of Such Behavior.

Clearly the registration of the disputed domain name was done to prevent the Complainant from using it. The WHOIS record indicates the <mycompiere.org> domain name was registered by the Respondent in September 2006 even though the Respondent had already previously registered and used <mycompiere.com> and <mycompiere.net>. Prior to September 2006, the domain name was apparently registered by another entity but was not active (earlier WHOIS records indicated a German entity). No other company has any legitimate right in the unique trademark COMPIERE, and no other company would have a legitimate right or reason to register the domain name except for the Complainant. This is not a situation where someone registered a domain name like <mydelta.com> and a number of companies using “delta” (e.g., Delta Airlines, Delta Faucets, etc.) as a trademark or trade name might each complain. Rather, the Respondent’s registration of the disputed domain name was clearly directed at the Complainant only, and specifically designed to prevent the Complainant from using this domain name.

Because the Respondent has registered the disputed domain name anonymously, it is difficult to determine all of the other domain names that the Respondent has registered to show a “pattern” of such behavior. Nonetheless, the Respondent has apparently registered at least three domain names: <mycompiere.com>, <mycompiere.net>, and <mycompiere.org>, and this is a sufficient pattern of conduct. See CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273 (registration of multiple domain names that are confusingly similar to established trademarks is evidence of bad faith). Again, the listed e-mail addresses for the .com and .net domain names are identical and both WHOIS records for the <mycompiere.com> and <mycompiere.net> domain names indicate that the sites have identical website titles (“Compiere Flash Training and Compiere Flash Support”) as well as identical meta keywords (“Compiere, Service, Support, Training, Compiere Flash Training, Compiere Flash Support”). In addition, the website at <mycompiere.net> previously was re-directed to <mycompiere.com> or had the same content. And as to <mycompiere.com>, that domain was also likely registered by the Respondent since the website at that domain is the same as the one at <mycompiere.org>. The <mycompiere.com> and <mycompiere.net> domain names were also registered anonymously through Network Solutions, Inc.

Under this factor alone, there is sufficient bad faith and the disputed domain name should be transferred to the Complainant.

b. The Domain Name Was Registered Primarily to Disrupt Compiere’s Business.

While the Compiere software is open source software which can be downloaded and used for free (provided that the open source licensing terms are complied with), the Complainant’s proprietary training materials are owned by the Complainant or its founders and cannot be copied, modified or distributed without the Complainant’s consent. The Complainant owns federal copyright registrations for its training materials. The Complainant sells its training materials through training seminars that it conducts for partners or others who pay the required training fees.

The Respondent has apparently somehow obtained the Complainant’s copyrighted training materials and created Flash versions of them which it now sells at the <mycompiere.org> website. Indeed, some of the Respondent’s infringing materials are nearly verbatim copies of the Complainant’s copyrighted materials. For example, the official training materials contain the following text to explain what a “Product” is in software.

What is a Product?

Something

You Sell and/or Purchase

Optionally Store

Has a Price

Examples:

Items (physical goods)

Service

Resource

Expense Type

The infringing version of the training materials sold on the Respondent’s website contains an almost identical text.

Similarly, the infringing materials sold at the <mycompiere.org> site have the same text verbatim regarding the term ‘Business Partner’ as the one used in the Complainant’s authorized training materials

By selling such infringing materials and using the <mycompiere.org> domain name and website as the vehicle for selling these infringing materials, the Respondent has clearly registered the disputed domain name to disrupt the Complainant’s business. That is the clear effect and likely intent of the Respondent’s conduct. Thus, under this “bad faith” factor, the domain name should also be transferred to the Complainant.

c. By Using the Domain Name, Respondent Has Attempted to Attract Users For Commercial Gain By Creating A Likelihood Of Confusion As To Source Or Affiliation.

Bad faith is also present under the final “bad faith” factor, namely, that the Respondent has attempted to attract users to its site for commercial gain by using a confusingly similar domain name. The registration and use of a domain name corresponding to or similar to the trademarks of an established company, such as the Complainant, in order to direct users to the site or to misdirect traffic to other web sites constitutes bad faith. See Paragraph 4(b)(iv) of the Policy; see also National Hockey League, WIPO Case No. D2001-1185; Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. As the Panel in National Hockey League stated, “[t]he use of a domain name that mimics [the complainant’s] highly recognizable trade marks demonstrates Respondent’s attempt to attract a large volume of Internet users by initially misleading them to believe that [the complainant] is the source, sponsor, or affiliate of the website.” Such a scheme, particularly when, as here, it is conducted for the Respondent’s financial gain, is a clear indication of bad faith. Paragraph 4(b)(iv) of the Policy.

Furthermore, widely-established trademark law recognizes that using another’s trademark in order to confuse customers into visiting a website that is unaffiliated with the trademark owner also constitutes trademark infringement, even if the customer realizes that there is no connection with the trademark owner by the time he or she actually makes a purchase. See Brookfield Communications, Inc. v. West Coast Entm’t Corp.. 174 F.3d 1036, 1062 (9th Cir. 1999) (“Although there is no source confusion in the sense that consumers know they are patronizing [the junior user] rather than [the senior user], there is nevertheless initial interest confusion in the sense that, by using [the senior user’s mark] to divert people looking for [the senior user’s goods] to its web site, [the junior user] improperly benefits from the goodwill that [the senior user] developed in its mark.”); Playboy Enters., Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1025 (9th Cir. 2004).

Here, the Respondent has registered the disputed domain name in a manner calculated to improperly trade on the goodwill of the Complainant’s trademarks, and such use constitutes trademark infringement. The infringement is especially damaging to the Complainant because the Respondent’s site directs potential customers who are looking for the Complainant’s products, services, training materials or even to authorized partners to the Respondent’s own site offering a competing product -- the infringing training materials. Customers may purchase training materials from the Respondent in the mistaken belief that such materials are sponsored by or affiliated with the Complainant. The Respondent is illicitly deriving commercial gain from its practice, as it sells these infringing materials and related support for anywhere from USD399 to over USD5,000.

Indeed, the Respondent has even registered or purchased Google Adwords (“Compiere” or “Compiere training”) in an attempt to direct persons seeking the Complainant’s training materials to its infringing sites and materials. Annex 8 (Pak Decl., ¶ 11 and Ex. I). Such a registration and use of another’s mark constitutes trademark infringement and bad faith under the UDRP policy. See, e.g., NCAA v. Halpern, WIPO Case No. D2000-0700 (“Initial interest is enough to demonstrate bad faith under Paragraph 4.b.(iv).”).

Given the Complainant’s longstanding use of the COMPIERE Marks, its websites at “www.compiere.com” and “www.compiere.org”, and its position as a leader in the open source CRM and ERM software field, the Respondent must have been well aware of the association of the COMPIERE marks with the Complainant and of the goodwill associated with the COMPIERE Marks when it registered and began using the disputed domain name in September 2006.

d. By Using the Domain Name For A Website To Sell Materials Infringing Compiere’s Copyrights, Respondent Has Engaged in “Bad Faith” Conduct.

The “bad faith” factors identified in the UDRP policy are non-exclusive and non-exhaustive. A panel may find the requisite “bad faith” based on other factors and other facts. The Respondent’s use of the disputed domain name and the corresponding website to sell materials that clearly infringe upon the Complainant’s registered copyrights, as described above (subsection c), also constitutes sufficient “bad faith.” The use and registration of the domain name to engage in, facilitate, or promote conduct that infringes upon the Complainant’s copyrights (in addition to its trademarks) should not be allowed. See TPI Holdings Inc. v. JB Designs, WIPO Case No. D2000-0216 (“intentional infringement of the Complainant’s copyright would in itself amount to use in bad faith”).

e. Respondent’s Failure to Respond to the Cease and Desist Letter, and Its Anonymous Registration Also Constitute “Bad Faith” Conduct.

The Respondent’s anonymous registration of the disputed domain name, and its failure to even respond to the Complainant’s Counsel’s demand letter (see above), also constitute bad faith. While the cease and desist letter addressed the <mycompiere.com> domain name, the registrant for that domain name and <mycompiere.org> are likely one and the same as the content on both sites is identical. Moreover, the Respondent’s registration of <mycompiere.org> in September 2006 occurred after the cease and desist letter was sent in May 2006; clearly then such registration was done in bad faith and with awareness of the Complainant’s rights. As the Panel in Six Continents Hotels, Inc. v. Damir Kruzicevic, WIPO Case No. D2002-0674 stated: “The Respondent also failed to respond to the Complainant’s letters and emails. Failure to respond is another sign of bad faith use.” Numerous other panels have also found that a failure to respond constitutes bad faith. See, e.g., Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633; Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis, WIPO Case No. D2001-1461.

B. Respondent

The Respondent, having been duly notified of the Complaint and these proceedings, did not reply to the Complainant’s contentions or take any part in them.

 

6. Discussion and Findings

To qualify for cancellation or transfer of the domain name at issue, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In previous UDRP cases in which the respondent failed to file a response, the panel’s decisions were based upon the complainant’s assertions and evidence, as well as inferences drawn from the respondent’s failure to reply. See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064; and also Kцstritzer Schwarzbierbrauerei v. Macros-Telekom Corp, WIPO Case No. D2001-0936.

Nevertheless, the Panel must not decide in the Complainant’s favor solely based on the Respondent’s default (Cortefiel S.A. v. Miguel Garcнa Quintas, WIPO Case No. D2000-0140). The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true.

A. Identical or Confusingly Similar

It is well established in previous UDRP cases that, where a domain name incorporates a complainant’s registered mark, this is sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The disputed domain name incorporates the trademark COMPIERE, which is owned and commercially used and promoted by the Complainant exclusively in and for the purposes of its business and the sale of its products and services for several years. Furthermore, the Panel accepts and recognizes that the Complainant’s trademark COMPIERE has a good reputation in its field. The Panel also accepts that the Complainant has invested considerable sums in the promotion and marketing of its mark around the world.

The Panel also agrees with the Complainant’s contention and the reasons stated that the addition in the disputed domain name of the word “my”, which is purely descriptive, does not add any distinguishing feature to avoid confusion amongst Internet users and consumers seeking information about the Complainant’s widely-known products and services, identified by the trademark COMPIERE. See Herbalife International of America v. myherbalife.com, WIPO Case No. 2002-0101 (finding <myherbalife.com> is confusingly similar to HERBALIFE); also Sony Kabushiki Kaisha v. Sin, WIPO Case No. D2000-1007 (finding <mysony.com> is confusingly similar to SONY).

Furthermore, the addition of the word “my” to the Complainant’s trademark, as part of the disputed domain name, rather than avoiding any confusion in the present case, actually creates confusion in the minds of Internet users and consumers seeking information about the products and services of the Complainant, in view of the fact that companies, like the Complainant, operating in the software field, use the word “my” with their trademarks and corresponding domain names, several examples of which have been cited above by the Complainant. Thus, when logging onto the Respondent’s website, Internet users and consumers would expect to find information about the Complainant’s products and services and not those offered by the Respondent.

In view of all this, the Panel finds that the domain name registered by the Respondent is confusingly similar to the essential part of the trademark COMPIERE, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has widely-established and commercially valuable rights through registration, substantial financial investment in and promotion of its trademark, as well as exclusive commercial use of the same by the Complainant over several years for the purposes of its business.

B. Rights or Legitimate Interests

In order to determine whether the Respondent has any rights or legitimate interests in respect of the domain name (paragraphs 3(b)(ix)(2) of the Rules and 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:

- Whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;

- whether the Respondent is making a legitimate non commercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. Indeed, in view of the Complainant’s widely-known business and trademark COMPIERE, the Respondent must have known, when registering the disputed domain name, that the Respondent could not have - or, indeed, claimed - any such rights or interests. Neither is there any evidence before the Panel that the Respondent has been authorized nor licensed by the Complainant to use the Complainant’s widely-known trademark COMPIERE as part of the disputed domain name. In any case, had the Respondent had any such rights or legitimate interests, the Respondent would have been expected to assert them; the Respondent has not done so and the Panel, therefore, draws the corresponding inferences.

In particular, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, the Respondent has used the disputed domain name for a website that purports to be and gives the impression of emanating from or, at least, in some way, being associated with the widely-known, substantial and successful business being carried on by the Complainant. Such conduct on the part of the Respondent can hardly be described as being in good faith.

Likewise no evidence has been adduced that the Respondent has commonly been known by the disputed domain name (indeed, according to the Complainant, an exhaustive Internet search has not produced any reference to a company of that name other than that of the Complainant); nor is making a legitimate non-commercial or fair use of the domain name. In fact, as regards the latter point, the Respondent is offering for sale on its website products and services purporting to be those of the Complainant without any authorization granted to the Respondent by the Complainant.

Indeed, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark inevitably leads to the diversion of the Complainant’s consumers to the Respondent’s website (see further on this point below) and, in view of the nature of the products and services offered by the Respondent, the consequential tarnishing of the Complainant’s valuable trademark and reputation. In other words, the Respondent is trading for commercial gain on the good name and reputation of the Complainant’s business and trademark and thereby unfairly attracting to its own business the substantial goodwill that the Complainant has established in many parts of the world over several years in its mark, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.

Therefore, the Panel concludes that the Respondent has neither rights to nor legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris, WIPO Case No. D2003-0366.

Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:

“(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”

Based on the evidence provided in the case file, the Panel agrees with the Complainant’s contention that the Respondent, by registering the disputed domain name, is unfairly trading on the Complainant’s valuable goodwill established in its widely-known trademark COMPIERE over many years. Indeed, in the absence of any evidence to the contrary, of which none is forthcoming on the part of the Respondent, the Respondent’s registration of the disputed domain name would not appear to be accidental, but deliberate and calculated to exploit the Complainant’s considerable reputation in its particular field of business for the Respondent’s own purposes and benefits. Such conduct, in the view of the Panel, amounts to bad faith.

Again, by registering and using the disputed domain name incorporating the Complainant’s trademark, COMPIERE, the Respondent is misleading Internet users and consumers into thinking that it is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or the Respondent’s activities are approved or endorsed by the Complainant, which, according to the evidence before the Panel, is certainly not the situation in the present case.

Furthermore, the Panel agrees with the Complainant that, by using a website to sell materials which infringe the Complainant’s copyright in those materials, this also constitutes bad faith on the part of the Respondent (TPI Holdings Inc. v. JB Designs, WIPO Case No. D2000-0216, in which it was held that “intentional infringement of the Complainant’s copyright would in itself amount to use in bad faith”).

The Panel further agrees that in this case, the apparent anonymous registration of the disputed domain name by the Respondent through a ‘c/o address’ also smacks of bad faith.

Likewise, the failure of the Respondent to answer the ‘cease and desist letter’ sent on May 3, 2006 by the Complainant’s Counsel to the Respondent (referred to above), in the opinion of the Panel, also shows bad faith on the part of the Respondent.

Finally, the failure of the Respondent to file any answer to the Complaint or otherwise participate in these proceedings, in the view of the Panel, is also a further indication of bad faith on the part of the Respondent.

Incidentally, the Panel also notes but does not comment on the other instances of bad faith on the part of the Respondent cited above by the Complainant, being content to base its finding under this part of the Policy on the grounds which the Panel has stated above.

Therefore, for all the above reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith.

 

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 name <mycompiere.org> be transferred to the Complainant.


Ian Blackshaw
Sole Panelist

Dated: April 3, 2007

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2007/d2007-0130.html

 

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