Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Metrix Networks, Inc., a Delaware corporation whose office is in Grapevine, Texas, United States of America. The Respondent is Donald E. Mabe Jr., an individual in Huntington Beach, California, United States of America.

The disputed domain names are: <metrixnetwork.com>, <metrixnetwork.net>, <metrixnetworks.com>, <metrixnetworks.net>.

The registrar for the disputed domain names is Register.com of New York City, New York, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on February 18, 2003, and in hard copy on February 20, 2003. On February 21, 2003, the Center transmitted by email to the registrar, Register.com, a request for registrar verification in connection with the domain names in dispute. On March 3 and March 6, 2003, Register.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.

Initially, the Complainant also requested transfer of a fifth domain name, <metrix-networks.com>. However, in response to the Center’s inquiry dated February 21, 2003, the registrar Network Solutions Incorporated on February 26, 2003, and on March 7, 2003, informed the Center that the Complainant already was the registrant of this domain name. Hence, on March 11, 2003, the Center requested that the Complainant amend its Complaint to eliminate from consideration the domain name <metrix-networks.com>, and to confirm that no judicial proceedings involving the disputed domain names were underway. The Complainant did this in its amended Complaint filed with the Center by hard copy on March 13, 2003, and by email on March 14, 2003.

The Center verified that the Complaint, together with the amendment 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 this proceeding began on March 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for the Response was set as April 6, 2003. The Respondent had already filed a Response with the Center on March 4, 2003.

The Center appointed Dennis A. Foster as panelist for this Case on April 15, 2003. The Panel finds that it was properly constituted. The Panel submitted its Statement of Acceptance and Declaration of Impartiality and Independence on April 14, 2003, as required by the Center to ensure compliance with the Rules, paragraph 7.

The due date for this Decision is April 29, 2003.

The Complainant and the Respondent are former business associates. Their work involved telecommunications and the Internet. The Respondent registered all four disputed domain names on April 21, 2002. The Complainant created the Delaware corporation, "Metrix Networks, Inc.", on June 14, 2002.

- The disputed domain names are identical to the Complainant’s company name, Metrix Networks, Inc., a Delaware corporation (Annex 3).

- The Respondent, Donald Eugene Mabe Jr., has no similarities between any of the disputed domain names, his legal name, or the name of his company, Attitude Technology.

- The Respondent, as an employee of Telemetry Technologies, Inc. (Annex 6) was directed by Telemetry Technologies, Inc. to purchase the disputed domain names for Metrix Networks, Inc.

- The Respondent was reimbursed by Telemetry Technologies, Inc. (Annex 4). The Complainant has since purchased Telemetry Technologies, Inc. (Annex 8). This purchase makes the Complainant, Metrix Networks, Inc., the legitimate owner of the disputed domain names.

- Aurion Technologies, Inc. is the company listed on the Whois database printout from Register.com in connection with the disputed domain names. Aurion Technologies, Inc. was also purchased by the Complainant (Annex 9).

- The Respondent threatened by email to transfer the authoritative DNS servers for the referenced domain names to a DNS server that would have no DNS records for the proper routes of the Complainant’s web home page or email servers (Annex 5). If the Respondent were to do this, it would cause a great deal of damage to the Complainant. The main login for the Complainant’s customers is located on the Complainant’s web home page at <metrixnetworks.com>. Complainant would potentially lose a large amount of business due to the customer’s inability to access the product that it pays for, and also due to a lack of credibility in the security of the customer’s sensitive data.

- The Respondent did ask orally, "What are they worth to you?", referring to the disputed domain names in a telephone conversation with the Complainant.

- The domain names were legally purchased by me in April of last year while the Complainant director’s (Mr. Sloan’s) company, Aurion, was in bankruptcy. The disputed domain names were purchased while the Respondent was in the employment of Telemetry Technologies, Inc. We were looking to put together a company (Metrix Networks) with a group from Iridium. In June of 2002, the deal fell apart.

- The Complainant bought specific assets from an investor in Telemetry Technologies, Inc., but the disputed domain names were not among the named assets.

- Since leaving Telemetry Technologies, Inc., the Respondent has requested in writing multiple times for an officer of Telemetry Technologies, Inc. to give him written orders on dealing with the disputed domain names. Respondent has been told Telemetry Technologies, Inc. is involved in shareholder law suits and as the disputed domain names are assets of Telemetry Technologies, Inc. and as Respondent does not wish to be a party to any of these law suits, it can not turn over the disputed domain names to the Complainant.

In order for the Complainant to prevail and have the four disputed domain names transferred to it, the Complainant must prove the following (the Policy, paragraphs 4(a)(i-iii)):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

- the domain name was registered and is being used in bad faith

The four disputed domain names are: <metrixnetwork.com>, <metrixnetwork.net>, <metrixnetworks.com>, and <metrixnetworks.net>. The Complainant has demonstrated to the Panel that it formed the Delaware corporation, Metrix Networks, Inc. on June 14, 2002, (Complaint Annex 3). The Complainant has also shown that, by a United States Bankruptcy Court/Northern District of Texas/Dallas Division Order dated July 15, 2002, the Complainant bought certain assets in bankrupt Aurion Technologies, Inc. (Complaint Annex 9).

However, the Complainant has not shown the Panel that it has a registered trademark for the name "Metrixnetworks", or that it has offered goods or services using the name "Metrixnetworks" so as to acquire common law trademark rights in the name. Thus, the Panel concludes that the Complainant has only established it has a tradename identical or confusingly similar to the four disputed domain names.

It is widely accepted that trade names are not protected under the Policy as such. In Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (December 4, 2000), the panel found, "It is true that trade names…were not intended to be made subject to the proposed dispute resolution procedure…It must be concluded, therefore, that ICANN did not intend the procedure to apply to trade names…". The panel made a similar observation in SGS Société Générale de Surveillance S.A. v. Inspectorate, WIPO Case No. D2000-0025 (March 17, 2000). Therefore, the Panel finds the Complainant has failed to carry its burden of proof under the Policy, paragraph 4(a)(i).

The Complainant is required to prove paragraphs 4(a)(i-iii) inclusively under the Policy, and therefore the Panel does not need to examine whether the Respondent has legitimate rights or interests in the disputed domain names, or whether he registered and was using the disputed domain names in bad faith.

The Panel has found the Complainant failed to show it has trademark or service mark rights in a name identical or confusingly similar to the four disputed domain names.

Therefore, per Policy paragraph 4(i) and Rules paragraph 15, the Panel orders that the four disputed domain names, <metrixnetwork.com>, <metrixnetwork.net>, <metrixnetworks.com>, and <metrixnetworks.net> remain registered to the Respondent, Donald Eugene Mabe, Jr.