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A.C.I.M.G.A. v. PNMI [2001] GENDND 1194 (20 June 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

1.1 The Complainant is A.C.I.M.G.A. (the Associazione Costruttori Italiani Macchine per l’Industria Grafica, Cartotecnica, Cartaria, di Trasformazione e Affini), an association of companies with its business office in Corso Sempione 4, 20154 Milan, Italy.

1.2 The Respondent is PNMI, a U.S. corporation with its place of business at 1030, East Lafayette Street, Tallahassee, FL 32301, United States of America.

2.1 The domain name upon which this Complaint is based is <converflex.com>. The registrar of the domain name as at the date of the Complaint is Network Solutions, Inc ("NSI").

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on April 13, 2001, and in hard copy on April 19, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint states that a copy of the Complaint together with the cover sheet as prescribed by the Supplemental Rules has been sent to the Respondent and that a copy of the Complaint has been sent to the Registrar of the domain name in dispute, NSI.

3.3 On April 18, 2001, the Center sent the Complainant’s representative an Acknowledgment of Receipt of Complaint.

3.4 On April 19, 2001, the Center received from the Complainant’s representative a request to amend the Complaint, stating that in every relevant part of the Complaint the domain name in dispute should be considered as <converflex.com> rather than <coverflex.com>.

3.5 The Center sent a Request for Registrar Verification to NSI on April 23, 2001, by email. NSI responded to the Center’s request by email on April 25, 2001, stating:

(a) that NSI was the registrar for the domain name in dispute;

(b) that the Respondent was the current registrant of the domain name in dispute;

(c) that the domain name <converflex.com> was active;

(d) the Respondent’s contact details; and

(e) that Network Solutions’ 5.0 Service Agreement was in effect.

3.6 The Panel notes that NSI’s response to the Center’s Request for Registrar Verification did not state that NSI was in receipt of a copy of the Complaint, despite the Center asking NSI to confirm whether this was the case in its Request for Registrar Verification. The Complaint states, at paragraph 18: "A copy of this Complaint has been sent to the concerned registrar on April 13, 2001, by E-mail (without enclosures) and postal-mail (with enclosures).".

3.7 In the absence of any relevant evidence, the Panel is of the view that the fact that NSI’s response to the Center’s Request for Registrar Verification did not state that NSI was in receipt of a copy of the Complaint was probably an oversight on the part of the individual at NSI who responded to the Center’s Request for Registrar Verification. In the Panel’s experience, if at the time of receiving the Center’s Request for Registrar Verification a registrar has not received a copy of the Complaint in accordance with the Rules, the registrar states this in its response. The Panel has no reason to doubt the Complainant’s assertion in paragraph 18 of the Complaint that a copy of the Complaint was sent to NSI on April 13, 2001. In any event, the Panel is satisfied that no unfairness has resulted to the Respondent by the fact that NSI did not state in its response whether or not it was in receipt of a copy of the Complaint at the time it received the Center’s Request for Registrar Verification.

3.8 The Center sent the Notification of Complaint and Commencement of Administrative Proceeding on April 30, 2001, to the Respondent by post/courier (with enclosures), by facsimile (without attachments) and by email (without attachments), and to the Complainant’s representative by email (without attachments).

3.9 On May 19, 2001, the Center received from the Respondent’s representative a request for an extension of time to file a Response. On May 21, 2001, the Center informed the Complainant’s representative and the Respondent’s representative that the Center granted an extension of 10 days to the Respondent and that the last day for submitting the Response to the Complainant and to the Center was May 29, 2001.

3.10 On May 29, 2001, the Center received from the Complainant’s representative an email it had received from the Respondent’s attorneys and the Complainant’s representative’s response to this email. The email from the Respondent’s attorneys stated that:

"We do not believe your Complaint has any merit because Respondent has intentions to use the domain name for a website which is totally outside the field of your trademark. However, we have been instructed to negotiate a proposal from your company to purchase the domain name."

In its reply to the above email, the Complainant’s representative stated:

"We assume that the consideration money requested for the above sale should not be higher than the amount of the registration fees and we confirm that our client would be willing to close the question under these conditions."

3.11 The Center received a Response from the Respondent’s representative by email on May 30, 2001, and in hard copy on May 31, 2001.

3.12 The Center sent a Transmission of Case File to Administrative Panel by email on June 11, 2001. The documentation was received in hard copy by the Panel on June 15, 2001 in Sydney, Australia.

3.13 All other procedural requirements appear to have been satisfied.

4.1 Activities of the Complainant

The following information is asserted as fact in the Complaint.

The A.C.I.M.G.A. Association, established in 1947, represents the major Italian Manufacturers of Machinery for the Graphics, Paper and Cardboard Processing, and Converting Industry.

4.2 The Complainant’s trademarks

The following information is asserted as fact in the Complaint.

The Complainant is the owner of the trademark CONVERFLEX, registered and used in Italy since the 1970s and in several other countries since the 1990s. Annexed to the Complaint are copies of several Italian (translated into English), International (translated into English), United Kingdom and United States trademark registrations for CONVERFLEX. The Complaint states that the trademark CONVERFLEX should therefore be considered as well-known in the field of international exhibitions of materials and machinery for converting.

4.3 Activities of the Respondent

No information as to the activities of the Respondent is asserted in the Response except that the Respondent is developing a website for the domain name <converflex.com> which does not relate to the goods and services which are described in the trademark of Complainant.

However, the Panel has noted the following information on the Respondent’s website at <www.pnmi.com>:

"Paragon New Media, Inc, based in Tallahassee, Florida specializes in Secure Online Registration Systems for trade shows, conferences and associations, as well as event related websites and CD-ROM production.

Producing more than 40 Online Registration Systems, Websites and CD-ROMs each year makes Paragon one of the industry's most productive vendors to the event management industry."

5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complaint asserts that the domain name in dispute is identical to the Complainant’s CONVERFLEX trademarks, since:

i) the Complainant’s trademark CONVERFLEX is an arbitrary denomination having a very high degree of distinctiveness;

ii) the registered trademark CONVERFLEX of the Complainant is identical to the domain name <converflex.com> of the Respondent, registered in 2000, since the addition of the top-level domain ".com" is of no relevance in this regard;

iii) even if the Respondent had chosen the domain name regardless of the Complainant’s trademark rights, <converflex.com> is in apparent and direct conflict with the Complainant’s prior rights in the registered trademark CONVERFLEX; and

iv) the domain name <converflex.com> is therefore likely to create confusion among Internet consumers and achieve its purpose of being a business identifier.

5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complaint asserts that the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name because:

i) the Complainant is the sole and exclusive owner of the trademark CONVERFLEX; and

ii) there is no relation between the Complainant and the Respondent and the latter is not a licensee of the former, nor has the Respondent obtained an authorization to use the Complainant’s trademark or to apply for any domain name incorporating the said trademark.

5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complaint asserts that the domain name should be considered as having been registered and used in bad faith because:

i) it is very likely that when the domain name was registered the Respondent knew or at least should have known of the existence of the Complainant’s rights in the highly distinctive and widely protected trademark CONVERFLEX;

ii) since the domain name was registered, the Respondent never used it as the Internet address of a website; and

iii) the Respondent does not seem to be interested in using the domain name, while the Complainant is prevented from using one of its most popular trademarks, namely CONVERFLEX, under the most popular top level domain, namely ".com".

6.1 In relation to the allegation that the domain name in dispute is identical to the Complainant’s CONVERFLEX trademarks, the Respondent agrees that the domain name is similar to a trademark of Complainant but states that there are many trademarks which are similar to the trademark of Complainant. The Respondent annexes to the Response an exhibit listing a number of trademarks which it considers similar to the Complainant’s CONVERFLEX trademark.

6.2 In relation to the allegation that the Respondent has no rights or legitimate interests in respect of the domain name, the Response denies this allegation and states that the Respondent is developing a website for the domain name <converflex.com> which does not relate to the goods and services which are described in the trademark of the Complainant. The Response states that the Complainant’s trademarks relate solely to the paper, paper converting, packaging, publishing and printing industries, and the Respondent does not have the intention of developing a website in this field.

6.3 In relation to the allegation that the disputed domain name has been registered and used in bad faith by the Respondent, the Response denies this allegation and states that the Respondent is presently developing a website in the fitness and health industry. The Respondent denies that the disputed domain name was registered for any of the reasons or purposes set out in paragraph 4(b)(i) to (iv) of the Policy.

7.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.

7.2 Domain Name identical or confusingly similar to Complainant’s trademark

The domain name in dispute is <converflex.com>. The Complainant has Italian, International, United Kingdom and United States trademark registrations of the word "CONVERFLEX". Therefore, the only difference between the disputed domain name and the Complainant’s "CONVERFLEX" trademarks is the gTLD suffix forming part of the domain name.

This and other Panels have consistently held that the ".com" gTLD suffix does not have a relevant distinguishing function in determining whether domain names are identical or confusingly similar to a trademark or trade name.

The Panel finds that the Complainant has proven paragraph 4(a)(i) of the Policy.

7.3 The Respondent has no rights or legitimate interests in the Domain Name

The Complaint asserts that the Respondent has no rights or legitimate interests in the disputed domain name. As stated above, the Respondent denies this allegation and states that the Respondent is developing a website for the domain name <converflex.com> which does not relate to the goods and services associated with the Complainant or its CONVERFLEX trademarks.

It is clear to the Panel that the Complainant owns the CONVERFLEX trademarks discussed above, and both the Complainant and the Respondent admit that there is no relationship between them. The question before the Panel is therefore whether, notwithstanding the ownership of the CONVERFLEX trademarks by the Complainant, the Respondent does have legitimate rights or interests in the disputed domain name.

Paragraph 4(c) of the Policy lists a number of circumstances which, if proven to exist by the Respondent, can be taken to demonstrate a Respondent’s rights or legitimate interests in a disputed domain name. The Respondent alleges in the Response that it does have legitimate interests in the disputed domain name, and that it believed it had the right to use the name and began to use the name before any notice of the dispute by the Complainant.

The Respondent has not put before the Panel any evidence of its use of or preparation to use the disputed domain name, but has merely stated in the Response that it is currently developing a website in the fitness and health industry. Nevertheless, given the nature of the Respondent’s business activities as outlined on its website <www.pnmi.com>, which the Panel has viewed, the Panel infers that it is entirely possible that the Respondent is using, or preparing to use, the disputed domain name in connection with a bona fide offering of goods or services, namely, its website production services.

There is insufficient evidence before the Panel to enable the Panel to determine with certainty whether the Respondent does or does not have any rights or legitimate interests in the disputed domain name. The Panel notes that under paragraph 4(a) of the Policy the burden of proof in respect of showing that each of the three elements of paragraph 4(a) of the Policy are present rests with the Complainant. Similarly, the Respondent has the burden of showing that paragraph 4(c) applies.

Although the Respondent has not demonstrated that paragraph 4(c) applies, the Complainant nevertheless must prove, at least on the balance of probabilities, that the Respondent has no rights or legitimate interests in the domain name. In the Panel’s view the Complainant has not discharged that burden and has therefore not proven paragraph 4(a)(ii) of the Policy.

7.4 Domain Name has been registered and is being used in bad faith

The Panel notes that paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

In order to show that the Respondent registered the domain name in bad faith, the Complainant has alleged: first, that it is likely that when the Respondent registered the domain name it knew or should have known of the existence of the Complainant’s rights in the highly distinctive and widely protected CONVERFLEX trademark and, secondly, that the Respondent has never used the domain name as the Internet address of a website, and does not seem to be interested in using the domain name. The Complaint also states that the Complainant is prevented from using one of its most popular trademarks, CONVERFLEX, under the ".com" gTLD.

Therefore, the Complainant appears to suggest that the circumstances outlined in paragraphs 4(b)(iv) and/or (ii) are applicable in this dispute: namely, that the Respondent has registered the domain name either to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website; or that it has registered the domain name in order to prevent the Complainant as the owner of the corresponding trademark from reflecting the mark in a corresponding domain name.

The Panel notes that the Complainant’s representative provided to the Center on May 29, 2001 correspondence it had received from the Respondent’s representative in which the Respondent’s representative stated that it had been instructed to negotiate a proposal from the Complainant to purchase the domain name. However, the Complainant has not asserted that the Respondent has attempted to sell the disputed domain name to the Complainant for an amount greater than the out-of-pocket expenses directly related to registering the domain name.

The Complainant has put no evidence whatsoever before the Panel to substantiate the two inferred allegations discussed above as to the bad faith registration and use of the disputed domain name by the Respondent. At present, although NSI has confirmed that the domain name <converflex.com> is active, this domain name does not resolve to an active website.

The Complainant therefore has not proven that the Respondent is attempting to create for commercial gain a likelihood of confusion between any website corresponding to the disputed domain name and the Complainant’s CONVERFLEX trademarks, nor that the Respondent wishes to prevent the Complainant from reflecting its CONVERFLEX trademarks in a corresponding domain name (and in any event there is no evidence before the Panel that the Respondent has engaged in a pattern of such conduct as required by paragraph 4(b)(ii) of the Policy).

Accordingly the Complainant has also failed to prove paragraph 4(a)(iii) of the Policy.

8.1 The Complainant having failed to prove the requirements of paragraph 4(a)(ii) and (iii) of the Policy, the Complaint is dismissed.

Philip N. Argy
Sole Panelist

Dated: June 20, 2001