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Hexagon AB, Hexagon Metrology AB, Hexagon Holdings, Inc., Hexagon Metrology GmbH, Hexagon Metrology Nordic AB, Hexagon Metrology SpA, Brown & Sharpe, Inc., C.E. Johansson Ltd., Sheffield Measurement, Inc., Romer, Inc., Wilcox Associates, Inc. v. Xspect Solutions Inc. [2005] GENDND 1050 (22 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hexagon AB, Hexagon Metrology AB, Hexagon Holdings, Inc., Hexagon Metrology GmbH, Hexagon Metrology Nordic AB, Hexagon Metrology SpA, Brown & Sharpe, Inc., C.E. Johansson Ltd., Sheffield Measurement, Inc., Romer, Inc., Wilcox Associates, Inc. v. Xspect Solutions Inc.

Case No. D2005-0472

1. The Parties

The Complainants are:

Hexagon AB;

Hexagon Metrology AB;

Hexagon Holdings, Inc.;

Hexagon Metrology GmbH;

Hexagon Metrology Nordic AB;

Hexagon Metrology SpA;

Brown & Sharpe, Inc.;

C.E. Johansson Ltd.;

Sheffield Measurement, Inc.;

Romer, Inc.;

Wilcox Associates, Inc.

represented by Wolf, Greenfield & Sacks, P.C., United States of America.

The Respondent is Xspect Solutions Inc., Wixom, Michigan, United States of America.

2. The Domain Names and Registrar

The 42 disputed domain names are:

<bns-cmm.com>;
<bnscmm.com>;
<brownandsharpe-cmm.com>;
<brownandsharpecmm.com>;
<brown-sharp-cmm.com>;
<brownsharp-cmm.com>;
<brownsharpcmm.com>;
<brown-sharpe-cmm.com>;
<brownsharpe-cmm.com>;
<brownsharpecmm.com>;
<cej-cmm.com>;
<cejcmm.com>;
<cejohansson-cmm.com>;
<cejohanssoncmm.com>;
<cordaxcmm.com>;
<dea-cmm.com>;
<deacmm.com>;
<discovery-cmm.com>;
<global-cmm.com>;
<globalcmm.com>;
<hexagon-metrology.com>;
<hexagonmetrology.com>;
<hex-met.com>;
<hms-cmm.com>;
<leitz-cmm.com>;
<one-cmm.com>,
<onecmm.com>;
<pcdmis-cmm.com>;
<pc-dmis.net>;
<pcdmis.net>;
<pcdmis-software.com>;
<pcdmus-cmm.com>;
<pcdmus.com>;
<romer-arm.com>;
<romerarm.com>;
<used-brownandsharp-cmm.com>;
<used-brownandsharpe-cmm.com>;
<used-cordax-cmm.com>;
<used-cordax.com>;
<used-dea-cmm.com>;
<used-pcdmis-cmm.com>;
<used-sheffield-cmm.com>.

All domain names are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2005. On April 29, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On May 4, 2005, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. 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 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2005.

The Center appointed Andrew Mansfield as the sole panelist in this matter on June 8, 2005. 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.

4. Factual Background

Complainants are part of Hexagon Group, a multi-national group of companies that design, manufacture, sell, and distribute coordinate measuring machines (“CMMs”), used by manufacturers worldwide to measure and reproduce three-dimensional objects. The Complainants are related companies.

Complainants have registered the following trademarks:

- U.S. Reg. No. 2,315,472 (Feb. 8, 2000) for BROWN & SHARPE for manual and computer controlled coordinate measuring machines and other related products;

- U.S. Reg. No. 1,719,019 (Sept. 22, 1992) for BROWN & SHARPE for application engineering, computer software development and designing, software consulting services;

- U.S. Reg. No. 1,660,670 (Oct. 15, 1991) for BROWN & SHARPE for electronic coordinate measuring machines and other related products;

- U.S. Reg. No. 1,658,029 (Sept. 24, 1991) for BROWN & SHARPE, for hand tools related to the measurement of certain items;

- U.S. Federal Registration No. 825,728 (March 14, 1967) for BS;

- U.S. Federal Registration No. 1,553,557 (June 6, 1989) for CORDAX for microprocessor based coordinate measuring machines;

- U.S. Federal Registration No. 1,767,192 (April 27, 1993) for DEA;

- U.S. Federal Registration No. 2,456,455 (May 29, 2001) for GLOBAL for CMMs;

- U.S. Registration No. 2,552,216 (March 26, 2002) for PC-DIMS for computer software for CMMs;

- U.S. Registration No. 1,936,478 (Nov. 21, 1995) for the mark ROMER; and

- U.S. Reg. Nos. 1,685,660 (May 5, 1992) and 1,685,106 (May 5, 1992) for the mark SHEFFIELD MEASUREMENT.

Complainants are in the process of registering the following marks:

- U.S. Trademark App. Serial Nos. 78/537,863 and 78/537,926 for HEXAGON METROLOGY;

- U.S. Trademark App. Serial No. 78/572,357, for DISCOVERY for CMMS;

- U.S. Trademark App. Serial No. 78/282,906 for ONE for CMMS; and

- U.S. Trademark App. Serial No. 78/608,895) for LEITZ for CMMS.

Complainants have a number of marks in states other than the United States of America. Such registrations are referenced but not detailed in the Complaint. For example, paragraph 37 of the Complaint alleges, “Hexagon Metrology also owns several international registrations for the BROWN & SHARPE marks, including registrations in the European Union, France, and Italy, among others.” Complainants apparently have international registrations for BS and B&S. See, e.g., UK Reg. No. 308,973 and Switzerland Reg. No. 368,313. Complainants further allege that CTM Registration No. 2,224,087 (March 17, 2004) provides trademark protection for PC-DIMS.

5. Parties’ Contentions

A. Complainant

In addition to the granted and pending trademark registrations detailed herein, Complainant alleges that it has common law trademark rights in the following marks as concerns CMM devices and technology:

- HEXAGON METROLOGY, HMS and HEX MET;

- BROWNE & SHARPE;

- BS and B&S;

- CEJ and C.E. JOHANSSON;

- CORDAX;

- DEA;

- DISCOVERY;

- GLOBAL;

- ONE;

- PC-DIMS; and

- LEITZ.

Complainants allege that Respondent is one of their direct economic competitors.

Complainants allege that Respondent knew of each of their common law marks and trademark registrations prior to the registration of each of the Domain Names. This allegation is supported by Respondent’s President’s prior employment by one of Complainants and references acknowledging the trademarks on its website.

Complainants allege that each of the Domain Names is confusingly similar to Complainants’ marks.

Complainants allege that Respondent has no rights or legitimate interests in any of the Domain Names. In particular, Respondent has never been known by any of the Domain Names.

Complainants allege that Respondent registered and used the Domain Names in bad faith. Bad faith is allegedly demonstrated by the facts that: (1) Respondent knew of Complainants’ trademark rights at the time of registration; (2) Respondent has registered and used domain names containing trademarks held by other companies in the CMM field; and (3) most of the Domain Names redirect Internet users to Respondent’s website which sells competing CMM products and services.

Complainants request that the Domain Names be transferred to Hexagon Metrology AB.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In order to succeed in their Complaint the Complainants have the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

(i) the domain names in dispute are identical or confusingly similar to trademarks or service marks in which the Complainants have rights;

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

(iii) the domain names were registered and are being used by the Respondent in bad faith.

Respondent defaulted and did not respond to the Complaint. The Respondent’s default does not automatically result in a decision in favor of the Complainants. Even in the face of such a default, Complainants must establish and carry the burden of proof on each of the three elements identified above with regard to each of the Domain Names. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. The Panel proceeds to deal with each of these elements in turn.

A. Identical or Confusingly Similar

In reviewing whether each of the Domain Names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, the Panel has eliminated common elements or words. See, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.), WIPO Case No. D2003-0696. In the field in which the Complainant and the Respondent compete, “CMM” and “ARM” are common terms referring to “coordinate measuring machine” and “articulated arm.” Such terms were not considered in comparing the Domain Names and relevant marks.

The possession of U.S. Federally registered trademark rights by Complainants meets the threshold requirement of possessing trademark rights sufficient to satisfy paragraph 4(a)(i) of the Policy. Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661. In addition to demonstrating U.S. Federal trademark registrations, Complainants assert numerous common law trademark rights. As to the alleged common law trademarks, the Complainants must show that the marks have become distinctive identifiers associated with the Complainants or their goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Common law trademark rights can arise even when the complainant is based in a civil law jurisdiction. Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322.

The Panel finds that Complainants have adequately demonstrated common law rights in each of the trademarks for which common law rights are asserted. Complainants have expended considerable sums advertising and promoting CMM products and services under these marks. Complainants have promoted these marks for years, if not decades. In the field of CMM instrumentation, Complainants’ common law trademarks are widely recognized as identifying the source and origin of goods and services.

The Panel presents its findings concerning identity and/or confusing similarity in the following table:

Domain Name	Closest Mark	Confusingly Similar?
<bns-cmm.com>	U.S. Federally registered mark BROWN & SHARPE, international mark BS, and common law mark B&S	YES
<bnscmm.com>	U.S. Federally registered mark BROWN & SHARPE, international mark BS, and common law mark B&S	YES
<brownandsharpe-cmm.com>	U.S. Federally registered mark BROWN & SHARPE	YES
<brownandsharpecmm.com>	U.S. Federally registered mark BROWN & SHARPE	YES
<brown-sharp-cmm.com>	U.S. Federally registered mark BROWN & SHARPE	YES
<brownsharp-cmm.com>	U.S. Federally registered mark BROWN & SHARPE	YES
<brownsharpcmm.com>	U.S. Federally registered mark BROWN & SHARPE	YES
<brown-sharpe-cmm.com>	U.S. Federally registered mark BROWN & SHARPE	YES
<brownsharpe-cmm.com>	U.S. Federally registered mark BROWN & SHARPE	YES
<brownsharpecmm.com>	U.S. Federally registered mark BROWN & SHARPE	YES
<cej-cmm.com>	Alleged common law mark CEJ	YES
<cejcmm.com>	Alleged common law mark CEJ	YES
<cejohansson-cmm.com>	Alleged common law mark C.E. JOHANSSON	YES
<cejohanssoncmm.com>	Alleged common law mark C.E. JOHANSSON	YES
<cordaxcmm.com>	U.S. Federally registered mark CORDAX	YES
<dea-cmm.com>	U.S. Federally registered mark DEA	YES
<deacmm.com>	U.S. Federally registered mark DEA	YES
<discovery-cmm.com>	Alleged common law mark DISCOVERY	YES
<global-cmm.com>	U.S. Federally registered mark GLOBAL	YES
<globalcmm.com>	U.S. Federally registered mark GLOBAL	YES
<hexagon-metrology.com>	Alleged common law mark HEXAGON METROLOGY	YES
<hexagonmetrology.com>	Alleged common law mark HEXAGON METROLOGY	YES
<hex-met.com>	Alleged common law mark HEX MET	YES
<hms-cmm.com>	Alleged common law mark HMS	YES
<leitz-cmm.com>	Alleged common law mark LEITZ	YES
<one-cmm.com>	Alleged common law mark ONE	YES
<onecmm.com>	Alleged common law mark ONE	YES
<pcdmis-cmm.com>	U.S. Federally registered mark PC-DMIS	YES
<pc-dmis.net>	U.S. Federally registered mark PC-DMIS	YES
<pcdmis.net>	U.S. Federally registered mark PC-DMIS	YES
<pcdmis-software.com>	U.S. Federally registered mark PC-DMIS	YES
<pcdmus-cmm.com>	U.S. Federally registered mark PC-DMIS	YES
<pcdmus.com>	U.S. Federally registered mark PC-DMIS	YES
<romer-arm.com>	U.S. Federally registered mark ROMER	YES
<romerarm.com>	U.S. Federally registered mark ROMER	YES
<used-brownandsharp-cmm.com>	U.S. Federally registered mark Brown & Sharpe	YES
<used-brownandsharpe-cmm.com>	U.S. Federally registered mark Brown & Sharpe	YES
<used-cordax-cmm.com>	U.S. Federally registered mark CORDAX	YES
<used-cordax.com>	U.S. Federally registered mark CORDAX	YES
<used-dea-cmm.com>	U.S. Federally registered mark DEA	YES
<used-pcdmis-cmm.com>	U.S. Federally registered mark PC-DMIS	YES
<used-sheffield-cmm.com>	U.S. Federally registered mark SHEFFIELD MEASUREMENT	YES

Complainant has submitted compelling evidence that it has common law trademark rights in B&S. Upon cursory review, the domain names <bns-cmm.com> and <bnscmm.com> may not appear to be confusingly similar to Complainants’ mark “B&S.” Upon closer examination, the Panel finds that the characters “BNS” are confusingly similar to “B&S” because the character “n” is commonly used as a substitute for “&” or “and,” as discussed more fully below.

The ampersand character cannot be represented in domain names for technological reasons. The ampersand character is therefore commonly replaced with “and” or dropped from a corresponding domain name altogether. “Internet users are familiar with the fact that ampersands cannot be used in Internet addresses.” Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail) Limited v. QTK Internet/Name Proxy, WIPO Case No. D2004-0496.

Rather than spell out “and” or drop the reference to the ampersand, Respondent has replaced the ampersand with “n.” The use of the combined characters apostrophe and n (‘n) is a common replacement for “and” or “ampersand.” Many examples may be cited (e.g., rhythm ‘n blues, rock ‘n roll). In a domain name, it is technically impossible to register the apostrophe, leaving only the character “n” representing ampersand.

For these reasons and in consideration of the technical limitations of the characters that may be used in domain names, the Panel finds that <bns-cmm.com> and <bnscmm.com> are confusingly similar to Complainants’ mark “B&S.”

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Complainant submitted evidence that Respondent has no rights or legitimate interests in any of the Domain Names. Respondent filed no response in this matter seeking to rebut any of this evidence. In addition to considering Complainants’ evidence, the Panel has reviewed the information concerning Respondent’s business available at <xspectsolutions.com>.

From this information, it is apparent that Respondent is a coordinate metrology outsourcing vendor. It advertises and promotes itself as a company capable of: (1) calibrating and servicing coordinate metrology equipment; (2) providing out-sourced coordinate metrology services; and, (3) selling new and used coordinate metrology equipment. In terms of new equipment, Respondent offers equipment manufactured by Wenzel, one of Complainants’ competitors. Although Respondent does not sell any of Complainants’ equipment new, Respondent does offer a significant number of used or “pre-owned” coordinate metrology devices manufactured by the Complainants.

This fact immediately calls into question whether Respondent, as a reseller of goods that can only be described in reference to the brand names of those items, has rights or legitimate interests in the Domain Names. This is especially true of the seven Domain Names that contain the word “used.”

It is the majority view of prior Panels that a reseller can have a legitimate interest in the use of a trademark within or as a domain name if the use fits certain requirements. In order to satisfy these requirements, Respondent would be required to: (1) actually sell Complainants’ products through the website located at a disputed domain name; (2) sell only Complainants’ trademarked goods at that website; (3) accurately disclose its relationship with Complainants; and, (4) make no attempt to “corner the market” on domain names containing the trademark. See, e.g, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No. D2002-0095 (May 7, 2002).

Respondent fails the second, third, and fourth prongs of the above-identified test concerning each of the Domain Names at issue. As opposed to selling only Complainants’ products at the website, Respondent primarily sells Wenzel products. Even in the category of used equipment, Respondent sells equipment from several sources other than Complainants. Respondent makes no effort to disclose that it is not an authorized distributor of Complainants’ goods. Finally, the Panel finds that Respondent has engaged in conduct that may be described as attempting to “corner the market” on domain names relating to Complainants’ goods.

Based on the case file and a review of Respondent’s website, the Panel finds that Respondent has no rights or legitimate interests in any of the Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:

“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 web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

As identified by Complainants, most of the Domain Names are entry portals that, after one additional click by the Internet user, lead to Respondent’s website located at www.xspectsolutions.com. The Domain Names form a vast trap or funnel through which Internet users looking for Complainants’ products are actually redirected to Respondent’s website. Respondent intentionally seeks to attract, through such confusion, Internet users to its website where such users then may receive promotional materials for Respondent’s services as well as goods offered by numerous competing coordinate metrology vendors. In some cases, the initial confusion utilized to attract Internet users to Respondent’s website leads to additional business contracts for Respondent.

This conduct clearly evidences bad faith under the Policy. In addition, the fact that the President of Respondent was formally employed by one of the Complainants evidences the willful and intentional use of Complainants’ trademarks.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following domain names be transferred to the Complainant Hexagon Metrology AB:

<bns-cmm.com>;
<bnscmm.com>;
<brownandsharpe-cmm.com>;
<brownandsharpecmm.com>;
<brown-sharp-cmm.com>;
<brownsharp-cmm.com>;
<brownsharpcmm.com>;
<brown-sharpe-cmm.com>;
<brownsharpe-cmm.com>;
<brownsharpecmm.com>;
<cej-cmm.com>;
<cejcmm.com>;
<cejohansson-cmm.com>;
<cejohanssoncmm.com>;
<cordaxcmm.com>;
<dea-cmm.com>;
<deacmm.com>;
<discovery-cmm.com>;
<global-cmm.com>;
<globalcmm.com>;
<hexagon-metrology.com>;
<hexagonmetrology.com>;
<hex-met.com>;
<hms-cmm.com>;
<leitz-cmm.com>;
<one-cmm.com>,
<onecmm.com>;
<pcdmis-cmm.com>;
<pc-dmis.net>;
<pcdmis.net>;
<pcdmis-software.com>;
<pcdmus-cmm.com>;
<pcdmus.com>;
<romer-arm.com>;
<romerarm.com>;
<used-brownandsharp-cmm.com>;
<used-brownandsharpe-cmm.com>;
<used-cordax-cmm.com>;
<used-cordax.com>;
<used-dea-cmm.com>;
<used-pcdmis-cmm.com>;
<used-sheffield-cmm.com>.

Andrew Mansfield
Sole Panelist

Dated: June 22, 2005