Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Anne E. Green The MathWorks, Inc., Natick, MA, USA ("Complainant") represented by Laurie Gill, of Palmer & Dodge LLP. The Respondent is MatLab (TM pend.) Ltd., St. Petersburg, II, USA ("Respondent").

The domain name at issue is "matlab.com" registered with Tucows.com, Inc..

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Nelson A. Diaz, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on March 27, 2001; the Forum received a hard copy of the Complaint on March 28, 2001.

On April 3, 2001, Tucows.com, Inc. confirmed by e-mail to the Forum that the domain name"matlab.com" is registered with Tucows.com, Inc. and that the Respondent is the current registrant of the name. Tucows.com, Inc. has verified that Respondent is bound by the Tucows.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 24, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@matlab.com by e-mail.

A timely response was received and determined to be complete on April 24, 2001.

On April 30, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nelson A. Diaz as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant contends that after it inadvertently allowed the registration of its domain name, which is identical to its trademark, to lapse, Respondent, whom Complainant contends has no legitimate interest in the domain name, registered and used the name in bad faith.

B. Respondent

Respondent contends that it has legitimate interests in the domain name, which Respondent concedes is identical to Complainant’s trademark, and that it has registered and used the domain name in good faith.

In reply to Respondent, Complainant contends that evidence Respondent cites in support of Respondent’s contentions cannot withstand scrutiny.

Complainant is a corporation that develops software which it supplies worldwide to individuals employed by technology companies, government research laboratories, financial institutions, and universities. Complaint, ¶ 14. Complainant holds a United States Patent and Trademark Office Certificate of Registration for the trademark, "MATLAB," effective for ten years beginning June 9, 1992. Complainant’s Annex "C". Complainant has also registered its trademark in Canada, Austria, Benelux Denmark, France, Germany, Italy, Spain, the United Kingdom, and as a Community trademark. Complainant’s Annex "D".

Complainant’s trademark identifies its eponymous "flagship product," which Complainant describes as "an integrated technical computing software product that combines numeric computation, advanced graphics and visualization, and a high-level programming language". The product’s applications include financial engineering and medical research. Complaint, ¶ 15. Complainant has identified this product as "MATLAB" since March, 1979. Complaint, ¶ 15.

Complainant first registered its trademark as a domain name in or about 1994 and repeatedly renewed the registration. Complaint, ¶ 16. While registered to Complainant, <MATLAB.com> automatically linked Internet users to Complainant’s home page, <MATHWORKS.com>. Complaint, ¶ 17; Complainant’s Annex "F".

On or about July 21, 2000, Complainant inadvertently allowed the domain name registration to lapse. Complainant’s Annex "E". Respondent registered the domain name on August 10, 2000. Complainant’s Annex "A".

The disputed domain name and Complainant’s trademark are identical.

On September 29, 2001, while registered to Respondent, the site, <MATLAB.com>, presented a link to the Internet search engine, "Best of the Web," and active links entitled, "Tourism" and "Finances," and inactive links entitled, "Databases" and "Mailing List." Complainant’s Annex "J".

On September 29, 2001, Complainant sent Respondent via email a letter informing Respondent of Complainant’s property interest in the trademark, "MATLAB," contending that Respondent was using the domain name in bad faith, demanding that Respondent relinquish its domain name registration, and warning Respondent that Complainant would resort to arbitration pursuant to the Uniform Dispute Resolution Procedure. Complainant Annex "K".

Complainant has provided the Panel with proof that the September 29, 2001 cease-and-desist letter successfully reached Respondent’s Administrative Contact email address, <admin@mail.matlab.com>. Complainant’s Annexes "A", "K". Respondent admits receiving the letter. See Response, ¶ 13. There is no evidence that Respondent ever replied or attempted to reply to the letter.

Additionally, on September 29, 2000, Respondent’s registered street address, as presented in the Whois database, was "Servicepoint, PO Box 544, St. Petersburg, St-Pb 197046 RU." Complainant’s Annex "B".

After complainant sent the September 29, 2001 cease-and-desist letter, the website tied to the website, <MATLAB.com>, was changed. The site now included a link to a page entitled, "About Us," which stated, "The main direction of our group MATLAB is physical properties of industrial materials". The deep linked web pages of this site, however, contained no information whatsoever in connection with this avowed purpose. The site contained a statement disclaiming any connection between the website and Complainant. Additionally, the link to the "Best of the Web" search engine was removed. See Complainant’s Annexes "H", "I".

Also changed was Respondent’s registered street address, which, as presented in the Whois database, now read, "Karavayevskaya 41/3 Suite 8, St. Petersburg, St. Petersburg 193177 RU." Complainant’s Annex "B".

On October 4, 2000, Respondent obtained a State Registration for "MatLab, LLP" with the Registration Chamber of St. Petersburg. Respondent’s Annex No. 1. The registered street address in the State Registration was "8 Rizhshky Ave., St. Petersburg." Id. Respondent has also produced a document entitled, Articles of Association Of of (sic) MatLab Limited Liability Company, which purports to have been approved "[b]y the minutes No. 5 of the general meeting of members of OOO Fides," which is dated October 4, 2000. Respondent’s Annex 2. Additionally, Respondent submitted an application to obtain a trademark for the term, "MatLab," with the Russian Agency on Patents and Trademarks on October 24, 2000. Respondent’s Annexes 3, 4.

On October 31, 2000, Complainant sent a second letter to Respondent inquiring into the nature of activities described in the "About Us" page. Complainant has provided the Panel with proof that the October 31, 2001 inquiry letter successfully reached Respondent’s Administrative Contact email address. Complainant’s Annex "L". Again, there is no evidence that Respondent ever replied or attempted to reply to this letter either.

Since October 31, 2000, Respondent’s registered street address, as presented by the Whois database, has changed a third time, now reading as, "Mailadmin, P. O. Box 41, St. Petersburg, St. Petersburg 193177 RU." Complainant’s Annex "A". Respondent’s latest registration information identifies its name servers as "internationally.com, nominators.com, and neonet.com," which servers are located near Kyimi, Finland. The server that actually hosts <MATLAB.com> is actually based in the State of Maryland, United States. See Complainant’s Annex "P".

Respondent has produced numerous documents that purport to reflect the activities of an entity identified as "MATLAB" in 1990 and 1991. The documents reference various activities, transactions, and products, the nature of which is stated in only the most general and largely inscrutable terms. See Respondent’s Annexes 7-15. The Panel finds that the origin and nature of these documents is at best dubious. The Panel also finds that these documents do not support Respondent’s contention that it operated a business under the name, "MatLab," in 1990 and 1991. The panel further finds that the first time Respondent used the name, "MatLab," in commerce is when it registered the domain name on August 10, 2000.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

(3) the domain name has been registered and is being used in bad faith.

There is no dispute the domain name registered by the Respondent is identical to

the trademark in which the Complainant has rights. That is the Panel’s conclusion as well. Respondent’s website disclaimer of any ties to Complainant does not affect this conclusion, as the disclaimer is not connected to the domain name, but to the underlying site. See AltaVista Co. v. Gamache, (FA 95249 Nat. Arb. Forum Aug. 17, 2000).

The Panel has found that the first time Respondent used the name, MatLab, in commerce is August 10, 2000, when Respondent registered the name as a domain name. Accordingly, there is no competent evidence that before any notice of this dispute, Respondent used or demonstrably prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Further, there is no competent evidence that Respondent has ever been commonly known by the domain name. Finally, there is no competent evidence that Respondent was making a legitimate noncommercial or fair use of the domain name. Complainant denies that Respondent has any license or other authority to use the mark. Accordingly, Respondent has no rights or legitimate interests in the domain name. See State Farm Mut. Auto Ins. Co. v. LaFaive, (FA 95407 Nat. Arb. Forum Sept. 27, 2000); Hewlett-Packard Co. v. Jeff Burgar d/b/a Hewlet Club, (FA 95407 Nat. Arb. Forum Apr. 11, 2000).

Based on the number of Complainant’s national and international trademark registrations, as well as the scope and breadth of Complainant’s business activities, the Panel has no doubt that Complainant’s mark is known to many people around the world.

Respondent initially used the domain name as a gateway to the Internet Search Engine, "Best of the Web," presumably to obtain "click through revenue" from the Search Engine’s owner. Accordingly, the Panel finds that by using the domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site, thus demonstrating bad faith. See Perot Sys. Corp. v. Perot.net, (FA 95312 Nat. Arb. Forum Aug. 29, 2000).

Respondent’s attempts to mask its activities with a sudden flurry of trademark applications and business registrations, accompanied by its redesign of its website, support this finding of bad faith. This finding is further buttressed by (1) the fact that Respondent never even attempted to respond to Complainant’s legitimate inquiries and justified demands; (2) the fact that Respondent continually changed its street address once Complainant began pursuing this matter; and (3) the fact that Respondent misrepresented its nameservers, all in aid of Respondent’s attempt to dodge Complainant and accountability.

The complaint is granted.