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Mk-Net-Work v. IVE Technologies [2004] GENDND 945 (5 July 2004)

1. The Parties

The Complainant is Mk-Net-Work, of Paris, France, represented by Fidal Law Society, France.

The Respondent is IVE Technologies, New York, New York, United States of America, represented by Philip R. Wolf, ESQ, United States of America.

2. The Domain Name and Registrar

The disputed domain name <notescompression.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2004. On April 27, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On April 27, 2004, 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. The Center verified that 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 May 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2004. The Response was filed with the Center on May 26, 2004.

The Center appointed Wolter Wefers Bettink as the Sole Panelist in this matter on June 22, 2004. 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.

Respondent sent its Response to the Center by e-mail dated May 26, 2004. The Center did not receive a hard copy of the Response nor did it receive any attachments.

On July 2, 2004 the Center received an email from Respondent, requesting more time to submit documents. As the 20 day period for submitting the Response had by then elapsed, the request was not granted.

4. Factual Background

On March 3, 2000, Complainant registered the domain name <notes-compression.com>. On April 16, 2004, Complainant filed an application for the trademark NOTES-COMPRESSION.COM in France for goods/services.

Respondent registered the domain name <notescompression.com> on August 23, 2003.

When Complainant discovered that Respondent had registered the domain name <notescompression.com> it sent an e-mail dated September 30, 2003, to Respondent with the request to immediately cease the use of the domain name, to immediately redirect the domain name to <notes-compression.com>, to transfer the registration of the domain name to Complainant and to send to Complainant an invoice for reimbursement of the domain name registration fee. On October 1, 2003, Respondent informed Complainant by email that it would inform Complainant within ten business days as to how it was willing to handle the requests of Complainant. On October 1, 2003, Complainant informed Respondent that it could not wait ten days. On October 4, 2003, Complainant sent a registered letter to Respondent with the request to immediately cease and desist the use of <notescompression.com> and to immediately transfer the domain name to Complainant at expense of Complainant. On December 22, 2003, Complainant’s lawyer, sent a letter of cease and desist to Respondent demanding amongst others to cease the use of <notescompression.com> in any way, to transfer the <notescompression.com> domain name to Complainant, to send by e-mail the corresponding registrar ID and password enabling access to the domain name as owner and to cease all other conduct that had caused or was likely to cause confusion between Complainant and Respondent and to take such other steps as might be required to eliminate such confusion. On behalf of Complainant their lawyer, informed Respondent that if these steps would not be taken in time, Complainant would start legal proceedings.

The Panel was not provided with Respondent’s reaction - if any - to the contents of Complainant’s letters of cease and desist. Therefore, the Panel assumes that the Respondent did not react to the contents of said letters.

5. Applicable rules

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) the domain name in issue is identical or confusingly similar to Complainant’s trademark, and

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

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

Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of the domain name in bad faith for the purpose of Paragraph 4(a)(iii) above.

Paragraph 4(c) of the Policy sets out, by way of example, three circumstances, each of which, if proven by Respondent, shall demonstrate Respondent’s rights or legitimate interest to the domain name for the purpose of Paragraph 4(a)(ii) above.

6. Parties’ Contentions

A. Complainant

Complainant states that it has registered the trademark NOTES-COMPRESSION.COM in France on April 16, 2004, and refers for the registration certificate to one of the attachments of the Complaint.

On its website “www.notes-compression.com,” Complainant markets and sells ZipMail, a line of compression software products for IBM/Lotus Notes platforms. Complainant states to have invested a substantial amount of money and significant efforts in advertising and promoting its website. Complainant submitted several advertisements in US and German magazines as well as Internet advertisements in which ZipMail is promoted and in which the website address “www.notes-compression.com” is mentioned. Complainant’s German partner has registered the domain names <notes-compression.de> and <notescompression.de>.

On Respondent’s website “www.notescompression.com,” Respondent sells a product previously named AttachLynx and recently named AttachZIP. Complainant states that this product is also an attachment compression for Lotus Notes.

According to Complainant, both Complainant’s and Respondent’s domain name link to websites where similar products are sold.

Complainant states that Respondent does not have a right or legitimate interest in respect of the domain name, because no trademark exists on which Respondent could rely at the time it registered the disputed domain name. Neither can Respondent sustain that the domain name is used by it as a company name or trade name, since the company name is IVE Technologies and the trade name of the product sold on its website was AttachLynx and is now AttachZIP.

According to Complainant, the disputed domain name was registered and is being used in bad faith. Respondent knew that Complainant had already registered and used a similar domain name in the same line of business; it has done so and used the domain name in order to attract internet users to Respondent’s website for the purpose of promoting goods relating to those offered by Complainant. By registering and using <notescompression.com>, Respondent tends to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s domain name.

Complainant filed a Report on Findings of a French judiciary assistant. The assistant noticed that on August 23, 2003, there was posted on the IBM/Lotus newsgroup of the IBM website a message which suggested consulting the ZipMail website (of Complainant) at the domain name <notescompression.com>. It further suggested visiting the website “www.attachlynx.com.” Both websites are owned by Respondent and compete with Complainant’s product ZipMail. According to Complainant, there is no doubt about the fact that this person works for or is a member of Respondent, also considering an email dated October 19, 2003 (found by using search engine Google). The email attached a copy of a press release from Respondent. In this press release, Respondent sums up ten reasons to compress Lotus Notes attachments. Eight of the ten reasons were, word for word, copied from a commercial brochure of Complainant. Further, Respondent claims to be an Advanced IBM Lotus Business Partner, while in fact he is merely an IBM-member.

Complainant states that it is inconceivable that, when the Respondent chose and registered the contested domain name in 2003, it had not been fully aware of the Complainant’s <notes-compression.com> domain name and particularly the widespread reputation that the domain name had attained as a result of the Complainant’s long term and ongoing efforts in the software compression field that he had started a few years before, particularly given the Respondent’s subsequent actions in using a website that offers goods directly competitive with those of Complainant through a domain name that identically matches Complainant’s domain name.

Based on the above, Complainant requests the transfer of the domain name <notescompression.com>.

B. Respondent

Respondent states that it has specialized in providing Lotus Notes/Domino e-mail solutions, including “Notes Compression” to Fortune-500 companies since 1994. Notes compression refers to compression techniques that are used to shrink e-mail file attachment size. Respondent states to be a Lotus Business Partner (now known as IBM Business Partner) for the past seven years.

Respondent states that “Notes Compression” is an IBM industry term. Respondent purchased the domain name <notescompression.com> solely for “indirect marketing purposes” to generate more traffic to its website for its software product called AttachZIP. Respondent states to never actively market his website because that would be an IBM trademark infringement.

If someone would ask one of its sales representatives to summarize AttachZIP in two words, according to Respondent the answer would be “Notes Compression.” Respondent was deciding to purchase either <lotusnotescompression.com> or <notescompression.com> and chose the latter because it is shorter and most likely the keywords that a person would type into a search engine or web URL address if looking for Notes Compression solutions.

Respondent states that NOTES is trademarked by IBM. Complainant is an IBM Business Partner who actively markets the domain name <notes-compression.com> in several magazine ad submissions. According to Respondent, this constitutes an IBM trademark infringement as well as a violation of IBM Business Partner guidelines.

Notes Mail is another IBM industry term. Respondent states that it purchased the domain name <notesmail.com> on November 22, 1999 (before the registration of Complainant’s domain name <notes-compression.com>), also for indirect marketing purposes to drive more traffic to its product and consulting website. Lotus Notes e-mail is often referred to as Notes Mail in the IBM industry. Respondent claims to never actively market its website since it would be an IBM trademark infringement. Respondent states that this demonstrates that it is in the practice of purchasing IBM industry term domain names.

According to Respondent, the IBM legal website prohibits the use of the word “Notes” in the domain name, as well as marketing that domain name by any IBM Business Partner or company selling Lotus Notes related software.

“Notes-compression.com” is not the name of the software products or company of Complainant. It’s product is called ZIPmail. Zipmail.com is already owned by a webmail service since November 1, 1996. According to Respondent, Complainant therefore decided to purchase the IBM industry term. Respondent is marketing its software products using the domain name <attachzip.com> which directly relates to the product name.

According to Respondent, Complainant is using the following industry terms in its marketed websites: “lotusnotes-compression.com,” “domino-compression.com,” “lotusdomino-compression.com,” “email-compression.com,” “mail-compression.com,” “outlook-compression.com,” “lotusnotes-compression.com,” “domino-compression.com,” “lotusdominocompression.com,” “emailcompression.com,” “lotusdominocompression.com” and “outlookcompression.com.”

The use of these domain names is, according to Respondent, unfair to its company as well as to its competitors.

Respondent concludes that it has a right to own the domain name <notescompression.com> since (i) it is a generic IBM industry term, (ii) Respondent proved that Complainant is in the habit of purchasing IBM industry terms which precede [some of the; Panel] domain names of Complainant (iii) Complainant has chosen to unfairly actively market <notes-compression.com> which infringes upon IBM trademarks and violates the IBM Business Partner guidelines, and (iv) Complainant has purchased over a dozen generic IBM industry term websites which is unfair to its competitors.

7. Discussion and Findings

A. Identical or Confusingly Similar

Complainant states that it is the proprietor of a trademark registration. However, it has submitted a certificate of a trademark application in France. At the time of rendering its decision, the Panel checked the status of this trademark. It appears that the application is still pending. As held consistently by Panels, a trademark application is not in itself sufficient evidence of a trademark or service mark in which the Complainant has rights, since applications are often opposed or may be refused for lack of distinctiveness. The only types of right that amount to trademark rights are, in addition to registered marks, unregistered or common law trademark rights.

Pending trademark applications have been regarded as evidence that the Complainant has generated goodwill in a mark which it wishes to protect. Combined with other information about the use and renown of the alleged mark an application can be relevant to a panel finding common law trademark rights (see for example Worldblackbelt, Inc. v. Nationwide Communications, eRes Case No. AF-0881 (August 2, 2001), Bennett Coleman & Co Ltd v. Steven S. Lalwani/Bennett Coleman & Co Ltd v. Long Distance Telephone Company, WIPO Case No. D2000-0014 and The David J. Joseph Company v. Richard F. Barry, WIPO Case No. D2000-1418).

In the present case, Complainant has only provided evidence that it uses <notes-compression.com> as a domain name for a website on which information regarding its product ZipMail is provided. The website address “www.notes-compression.com” is mentioned in advertisements about ZipMail. This is not evidence that the domain name is actually used as a trademark, in order to distinguish certain goods or services, which might generate unregistered trademark rights.

This means that the Panel does not accept that the Complainant has demonstrated any unregistered rights in the trademark for which it made an application in France.

B. Rights or Legitimate Interests: Registered and Used in Bad Faith

Based on the above, the Panel concludes that Complainant did not prove that it has rights in a trademark. Given this finding, it is unnecessary for the Panel to consider whether the Respondent has any rights or legitimate interests in the domain name and whether the domain name of Respondent is registered and used in bad faith.

8. Decision

For all the foregoing reasons, the Complaint is denied.

Wolter Wefers Bettink
Sole Panelist

Dated: July 5, 2004