DECISION

Integrated Management Solutions, Inc. v. AMMG, Inc.

Claim Number: FA0203000105215

PARTIES

The Complainant is Integrated Management Solutions, Inc., Furlong, PA (“Complainant”) represented by Thomas J. Durling, of Drinker Biddle & Reath LLP.  The Respondent is AMMG, Inc., Auburn, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <foodconnex.com>, <foodconnex.net>, and <foodconnex.org>, registered with Network Solutions, Inc..

PANEL

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.

P. Jay Hines as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 28, 2002; the Forum received a hard copy of the Complaint on March 4, 2002.

On March 4, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <foodconnex.com>, <foodconnex.net>, and <foodconnex.org> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 5, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 2002 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@foodconnex.com, postmaster@foodconnex.net, and postmaster@foodconnex.org by e-mail.

A timely Response was received and determined to be complete on March 25, 2002.

On April 2, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed P. Jay Hines as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a software development company which develops products for the food distribution and processing industry.  Since at least as early as May 1997, Complainant has used the trademark FOOD CONNEX in connection with a food distribution computer software product.  Complainant owns U.S. Registration No. 2,419,430, issued January 9, 2001, for the mark FOOD CONNEX for “computer software for food distributors for ordering, routing, and shipping of customer orders and for accounting.”  Complainant operates a  web site that features this product at <foodsoft.com>Complainant filed its application to Federally register its mark on May 9, 1997.  Exclusive right to use of the term “food” is disclaimed.

Respondent was established in 1994 as American Multi Media Group (AMMG) to develop and create digital business applications, such as web-based training, customized sales presentations, digital imaging and catalogues for the food industry.  In the year 2000, Respondent changed its name to Foodconnex Worldwide and added e-commerce hosting and related services capabilities.  On March 21, 2000, Respondent registered the subject domain names.  On May 19, 2000, Respondent filed two Federal service mark applications, one for FOODCONNEX and one for FOODCONNECT WORLDWIDE, for the “facilitation of food purchase transactions between growers, wholesalers and retailers in the food and grocery industry.”  On December 6, 2000, initial Office Actions issued in connection with these applications referencing the prior pending application of Complainant as a potential bar to registration. 

On December 1, 2000, Complainant’s counsel forwarded a cease and desist letter directly to Respondent.  Respondent’s counsel, after several exchanges, ultimately indicated in a voicemail message of August 15, 2001 that Respondent was willing to discontinue use of the FOODCONNEX mark, subject to an agreed-upon phase out period.  Proposed terms were discussed and set forth by Complainant’s counsel in correspondence of September 26, 2001.  On October 19, 2001, counsel for Respondent indicated that he no longer represented Respondent.  Complainant’s counsel then sent a letter on October 31, 2001 directly to Respondent’s President.  Complainant has not received a response to that letter.

Complainant alleges that the subject domain names are identical to its common law and registered mark.  Complainant contends that use of domain names which from the outset infringe on the trademarks of others can never be considered legitimate.  Complainant contends that prior to the dispute, Respondent was not commonly known as FOODCONNEX or FOODCONNEX WORLDWIDE, but as AMMG, Inc.  Further, Complainant contends that Respondent is not using the domain names for a legitimate non-commercial or fair use, but that the facts demonstrate that its desire was to trade on Complainant’s good will and to compete unfairly and divert Complainant’s customers to Respondent’s web site. 

Complainant contends that bad faith is demonstrated under ICANN Policy 4(b)(iii) and (iv) as Respondent registered the disputed domain names primarily for the purpose of disrupting the business of a competitor and with an intentional attempt to attract, for  a commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark.  Complainant alleges actual or constructive knowledge of Complainant’s rights because a simple Internet or a search among the records of the U.S. Patent and Trademark Office would have revealed Complainant’s use of the mark and its Federal application.  Complainant points to the statement on Respondent’s web site misrepresenting that FOODCONNEX is a registered trademark of Foodconnex Worldwide.  Complainant also points to certain actions of Respondent since being placed on notice of the claimed infringement, including stalling tactics in addressing the issue and failure to pursue settlement negotiations.  Complainant also alleges that Respondent has copied the design feature of Complainant’s mark as depicted on its web site, namely, a humanized final letter “X.” 

Complainant also contends that Respondent’s bad faith is demonstrated under ICANN Policy 4(b)(ii) by its registration of the three domain names. 

B. Respondent

            Respondent claims that it is not selling any type of software, but acts as an application service provider for food industry clients wishing to move their manual sales processes into digital form.  Respondent asserts that it registered the domain name <foodconnex.com> in March 2000 after conducting a trademark search indicating Complainant’s application had gone abandoned as of February 24, 2000 for failure to respond to an Office Action.  Respondent admits that Complainant’s application was reinstated, but claims that Complainant’s two word mark FOOD CONNEX is different than the domain names <foodconnex.com>, <foodconnex.net> and <foodconnex.org>.  Respondent claims that its use and registration commencing in March 2000 was in good faith based upon the non-competing nature of its services and the availability to Complainant of domain names using a hyphen or underscore between the words “food” and “connex.”  Further, Complainant should have registered <foodconnex.com> at the time of registering <foodsoft.com>.

C. Additional Submissions

            Complainant counters that Respondent was aware of its FOOD CONNEX mark prior to registering the subject domain names.  Complainant provides its Federal application file history to demonstrate that it timely filed a response to an Office Action of January 25, 1999, thus showing that the Notice of Abandonmnet issued due to error by the U.S. Patent and Trademark Office.  Complainant reasserts its common law rights and characterizes Respondent’s actions as “willful blindness” to those rights, citing Compact Disc World, Inc. v. Artistic Visions, Inc., FA97855 (Nat. Arb. Forum, Aug. 15, 2001). 

DISCUSSION

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.

Identical and/or Confusingly Similar

            The Panel finds that the subject domain names are identical or confusingly similar to a trademark in which the Complainant has rights.  Respondent does not challenge Complainant’s claimed common law rights in the mark FOOD CONNEX commencing in May 1997.  As the deletion of spaces and the addition of generic domain names are required for domain name registration, they are irrelevant alterations for the purposes of determining whether the mark and the domain name are identical.  Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002); Wembly Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000).  They are also minor changes in presentation which do not alleviate the confusing similarity and identity of the terms in sound, appearance and commercial impression. 

Rights or Legitimate Interests

            Respondent admits its awareness of Complainant’s mark prior to changing its name to Foodconnex Worldwide and registering the subject domain names.  While Respondent’s services differ somewhat in application from the purpose of Complainant’s computer software, the respective goods and services are directed to the same general class of purchasers in the food industry.  Proceeding with the adoption of the mark and trade name FOODCONNEX, or FOODCONNEX WORLDWIDE, in the face of knowledge of Complainant’s common law rights cannot legitimatize the infringing use of the subject domain names.  See Chanel ,Inc. v. Estco Technology Group, D2000-0413 (WIPO, Sept. 18, 2000). 

            Respondent was not commonly known by the disputed domain name prior to its actual knowledge of Complainant’s rights.  The inference is one of diversion of Internet traffic, not legitimate use.  North Coast Med, Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000); Vapor Blast Mfg. Co. v. R & S Tech, Inc.,FA 96577 (Nat. Arb. Forum Feb. 27, 2001); and Klosmea Pty. Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000). 

     

            There is no claim of legitimate non-commercial or fair use.  Accordingly, the Panel finds for the Complainant on the second element.

Registration and Use in Bad Faith

            The Panel does not believe that the registration of the domain name in the three top-level categories of .com, .net and .org demonstrates a pattern of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.  registration in the initial three tld’s has been quite a common practice. 

            Actual knowledge of the Complainant’s rights in a trademark is a factor supporting bad faith registration and use.  RRI Financial, Inc. v. Ray Chen, D2001-1242 (WIPO), Dec. 11, 2001); Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO, Apr. 18, 2000).  While Respondent does not technically sell software, its food industry customers benefit from the e-commerce software suite provided by Commerce One, Inc., available through Respondent’s web site.  The goal of each party’s respective goods and services is to facilitate sales in the food industry.  The same potential customers could avail themselves of Complainant’s product or Respondent’s services to reach this goal.  Accordingly, the Panel finds that the competitive relationship between the parties is such that the inference is Respondent registered the disputed domain names to disrupt Complainant’s business under ICANN Policy 4(b)(iii) or to intentionally attempt to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s mark under ICANN Policy 4(b)(iv).  Surface Protection Indus, Inc.  v. Web Posters, D2000-1613 (WIPO Feb. 5, 2001); Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum, July 18, 2000); State Fair of Texas, v. Granbury.com, FA 95288 (Nat. Arb. Forum, Sept. 12, 2000). 

            Respondent’s course of conduct after receipt of a formal cease and desist letter on December 1, 2000 also is an indication of bad faith.  In particular, reneging on offers, through counsel, to resolve the matter by phasing out use of the subject domain names shows bad faith.  Ticketmaster Corp. v. Spiderweb Design, Inc., D2000-1551 (WIPO Feb. 4, 2001). 

            The Panel makes no findings with respect to the misrepresentation that Respondent had registered the FOODCONNEX mark or that Respondent intentionally copied a design component associated with Complainant’s presentation of its mark on its web site.  However, the Panel finds that the Complainant satisfied ICANN Policy 4(b)(iii) and (iv).     

DECISION

                                    For the foregoing reasons, the Panel concludes:

- that the domain names registered by the Respondent are confusingly similar to the trademark in which the Complainant has rights;

- that the Respondent has no rights or legitimate interests in respect of the domain names; and

- that the domain names have been registered and are being used by the Respondent in bad faith.

                  Accordingly, the Panel finds that the Complaint should be allowed and the domain names <foodconnex.com>, <foodconnex.net> and <foodconnex.org> be transferred to the Complainant.                   

P. Jay Hines, Panelist
Dated: April 11, 2002

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