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Escher-Grad Technologies, Inc. v. Tina Ujevica [2005] GENDND 1913 (25 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Escher-Grad Technologies, Inc. v. Tina Ujevica

Case No. D2005-0956

1. The Parties

The Complainant is Escher-Grad Technologies, Inc., Montreal, Quebec, Canada, represented by Law Offices of Peter Kelman, United States of America.

The Respondent is Tina Ujevica, Zagreb, Croatia.

2. The Domain Names and Registrars

The disputed domain names <cobaltctp.com> and <eschergrad.com> are registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2005. On September 7, 2005, the Center transmitted by email to BulkRegister, LLC a request for registrar verification in connection with the domain names at issue. On September 7, 2005, BulkRegister.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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 21, 2005. 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 the proceedings commenced on September 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2005.

The Center appointed Miguel B. O’ Farrell as the Sole Panelist in this matter on November 1, 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

Complainant is the owner of the trademark “ESCHER GRAD” registered in Canada on July 6, 1990.

It also owns the de facto trademark “COBALT CTP SYSTEMS”, with which Complainant distinguishes a line of graphical high-resolution imaging products since 1999.

The domain names in dispute <eschergrad.com> and <cobaltctp.com> were registered on August 20, 2003.

5. Parties’ Contentions

A. Complainant

Complainant alleges that:

The owner of the disputed domain names is Tina Ujevica.

The Complainant has been unable to contact the current registrant, Tina Ujevica, using the information provided in the Whois listing.

During the period of time that Complainant has been aware of the domain names, the domain names have been registered to different entities: Web Global Net, Printing World, Webmaster and Tina Ujevica.

In June 2004, Mr. Kaye, at that time an employee of Complainant, had a telephone discussion with a Mr. Thornton in which Mr. Thornton admitted to own the domain names.

On or about June 30, 2005, attorney Mr. Kelman spoke with Mr. Thornton, who admitted that he was aware of the domain names and the content of the sites. He denied ownership of the domain names, but stated that for payment of $2,500 he would assist Complainant in acquiring control of the domain names from their then current owner. Mr. Thornton did not reveal contact information of the owner(s) of the domain names. Based on information known to it, Complainant believes that Mr. Thornton is the de facto owner of the domain names, or controls the entity that is such owner.

The domain names are identical or confusingly similar to a trademark in which the Complainant has rights.

Complainant has owned and operated the company Escher-Grad Technologies, Inc. since 1986 (“Escher-Grad”). Escher-Grad designs and manufactures graphic art equipment, namely laser photo plotters and related software, often called “computer to plate” systems. Escher-Grad conducts business in over 60 countries, with customers ranging in size from the largest print shops to small, family-owned printing businesses.

Escher-Grad has a registered trademark in Canada for “ESCHER GRAD” used with respect to the production of graphic arts equipment (registered as of 7/6/1990, Application Number 0605883, Registration Number 0605883).

Escher-Grad maintains an Internet site, <escher-grad.com>, where it promotes the company and its products. It has owned this site since September 23, 1997.

Escher-Grad manufactures and sells a line of graphical high-resolution imaging products called the “COBALT CTP” line. Escher-Grad has been selling these products sine 1999. Escher-Grad maintains an Internet site, “www.cobalt-ctp.com”, where it describes this product line. Escher-Grad has owned this site since August 9, 2002.

As stated above, Complainant owns two domain names, which it uses to promote the company’s products and services: <escher-grad.com> and <cobalt-ctp.com>. The disputed domain names are identical to the company’s domain names, except that each of the domain names omits the hyphen that is contained in the company’s domain names. Escher-Grad customers have inadvertently gone to the domain names and have been confused by the messages found on the domain names. Thus Complainant argues that there is empirical evidence that the domain names are confusingly similar to the domain names owned by the company.

The words “Escher”, “Grad”, and “Cobalt” are not descriptive of or intuitively related to the computer-aided printing business. Moreover, Complainant is unaware of any instance of the phrases “Escher Grad” or “Cobalt CTP” being used in any context other than to refer to Complainant or its products.

The Respondent has no rights or legitimate interests in respect of the domain names.

Complainant can only infer the reasons why the original owner of the domain names may have acquired them. Whois records indicate that the domain names were first acquired by the original owner on August 20, 2003. This is approximately two months after Mr. Thornton became a sales representative to Escher-Grad.

Based on information available to it, Complainant states that Mr. Thornton was instrumental in the registered owner obtaining the domain names. The initial registered owner of the domain names was Web Global Net. Web Global Net is contact information included an address in Stoughton, Massachusetts. This was the residential address that Mr. Thornton provided to Escher-Grad when he became a sales representative. A check of Massachusetts Secretary of State corporate records does not reveal a listing for Web Global Net. In Massachusetts, if an entity does business and is not registered as an independent legal entity, it must register with the municipality where it does business using the abbreviation a d/b/a (“doing business as”). Web Global Net’s place of business, Stoughton, Massachusetts, United States of America, does not have a d/b/a listing for an entity doing business as Web Global Net. Thus, Web Global Net, if it existed at all, did business not in compliance with the laws of its local jurisdiction. The contact information for Web Global Net matched the contact information that Escher-Grad maintained for Mr. Thornton.

On August 20, 2003, when the domain names were initially registered, Mr. Thornton was a sales representative for the Complainant. Mr. Thornton had recently executed a Sales Agency Agreement and Confidentiality Agreement with Escher-Grad, effective June 16, 2003. Mr. Thornton, in his capacity as sales representative for the Complainant, placed orders for the products that Complainant advertises on its “www.cobalt-ctp.com” site. Thus, Mr. Thornton either was aware, or should have been aware, that the Complainant owned the URLs “www.escher-grad.com” and “www.cobalt-ctp.com”. Mr. Thornton did not disclose to Complainant that he had acquired the disputed domain names. Assuming, that Mr. Thornton is indeed the controlling force behind the numerous registered owners of the domain names, his activities in falsely promoting products that compete with those of Escher-Grad is in direct violation of his Sales Agency Agreement and Confidentiality Agreement.

Complainant first became aware of the offending content on the sites in June of 2004. In January 2004, Mr. Thornton was terminated from his sales representative position by Escher-Grad. Mr. Thornton was paid compensation by Escher-Grad in accordance with the terms of his Sales Agency Agreement, such compensation in excess of $75,000 (US). However, Mr. Thornton has, at different times and to different people, expressed the opinion that he is owed more money from Escher-Grad for his services.

Complainant argues that Respondent has neither: (a) identified its sites as protest sites; nor (b) created sites substantially different from Complainant’s sites. Given the Respondent’s failure to so identify its sites as protest sites, Respondent can not shield its bad faith activities under the protective umbrella of protest.

Even if Mr. Thornton acquired the domain names with the intent of using them in his work for the Complainant, this is not enough to create a legitimate interest in them. Respondent’s use of these domain names fails numerous requirements that various UDRP panels have used as tests for an agent’s good-faith interests.

As further evidence of Mr. Thornton’s lack of a legitimate interest in the domain names, a trademark search on marks equivalent to the domain names shows no mark owned by or applied for by Mr. Thornton.

The phrases “Escher Grad” and “Cobalt CTP” are not generic terms, but well-established trademarks of a company doing business in over sixty countries, which any prospective owner could easily discover through use of a search engine.

The domain names were registered and are being used in bad faith.

Respondent has offered to sell the domain names to Complainant for an amount in excess of Respondent’s costs of registering the domain names.

Assuming that Mr. Thornton is the de facto owner of the domain names, Mr. Thornton has twice offered to sell the domain names to the Complainant for consideration far in excess of the cost of obtaining them.

First, in 2004, Mr. Thornton offered to sell the domain names to the Complainant for $4,000. Complainant first became aware of the sites when Mr. Thornton sent an email to Complainant’s director of sales, Mr. Kaye. When Mr. Kaye discussed the existence of the sites with Mr. Thornton, Mr. Thornton acknowledged ownership of the domain names and offered to sell them to Complainant for $4,000.

Second, in July of 2005, Mr. Thornton offered to assist the effort to transfer the domain names to the Complainant for $2,500.

As further evidence of the Respondent’s intention to sell the domain names for consideration in excess of the Respondent’s costs of acquisition, from time to time Respondent has posted a message on the sites inviting users to submit a bid to the Respondent to purchase the domain names.

Respondent’s sites have contained material that was taken directly from Complainant’s website and that violated copyright laws.

From time to time, the sites have published defamatory statements regarding Mr. Najeeb, the President and CEO of Escher-Grad. The attacks have been personal and have included numerous statements that are factually untrue and personally offensive. Further, at one point the sites published the private cellular telephone number of Mr. Khalid. At the time this information appeared on the site, Web Global Net was the listed owner of the site. At that time, Web Global Net had a Massachusetts address. Massachusetts General Laws Ch. 214, Section 1B states in part that “A person shall have a right against unreasonable, substantial or serious interference with his privacy”. By publishing Mr. Khalid’s personal cell phone number on the sites, Web Global Net, and those responsible for its actions, have clearly and blatantly violated this statute.

Numerous acts of the Respondent have either disrupted or were intended to disrupt the Complainant’s business. Namely:

Respondent’s site “www.eschergrad.com” purported to collect customer information that was not forwarded to Complainant.

Respondent’s site “www.cobaltctp.com” displayed information about products manufactured by Agfa and other manufacturers and distributors that were competitive with those of Complainant.

The sites have referred users to: (a) Dad’s Printing Company; (b) Agfa; and (c) JetPlate Systems, all competitors of the Complainant.

The sites have displayed messages suggesting that the Complainant is shut down and out of business.

Respondent has attempted to use the domain names to attract internet users by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of a service on the Respondent’s website or location.

Moreover, “www.eschergrad.com” further encouraged users to provide user contact information. Such information was never sent to Complainant. One can reasonably conclude that the Respondent collected the information supplied by misled users and that Respondent used this information to Respondent’s financial gain.

Recent activity of the Respondent suggests that the Respondent is attempting to mask activities so that Escher-Grad is not aware of the sites. Respondent has implemented a screen that prohibits computers identified with Escher-Grad Technologies, Inc. from accessing the sites. When an Escher-Grad employee attempts to access the sites, a message displayed states that access is forbidden.

During the relevant time at issue in this Complaint, the Respondent appears to have furnished its registrar with misleading information regarding the identity of the true owner of the domain names in an effort to conceal the true identity of the owner. For example, at one point, the registered owner of both domain names was Printing World. A fictitious Florida street address was provided. The telephone number was fictitious. Printing World appears to be an Asian Company.

The last published owner of “www.eschergrad.com” was listed as Webmaster, in Newton, Massachusetts, USA. The listed telephone number was a number to a different business, which disclaimed any knowledge of or connection to the domain names.

The current purported owner of the domain names is listed as an individual residing in Croatia, and provides a non-functioning telephone number.

Past UDRP panels have held that providing false information when registering a domain name is indicative of intent to conceal owner information, an element of bad faith. Regardless of the whether the current owner of the domain names is responsible for acts of prior owners, its registration with false information is ongoing evidence of bad faith.

Finally, Complainant requests that the domain names <eschergrad.com> and <cobaltctp.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To qualify for cancellation or transfer, the Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii) The disputed domain names have been registered and are being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the complaint and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

In accordance with the above, in previous WIPO UDRP cases in which the responding party failed to file its response, the panels’ decisions were based upon the inferences drawn from the respondent’s failure to reply (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064) and from the complainant’s assertions and evidence.

Notwithstanding the above, a panel must not decide in a complainant’s favor solely given the respondent’s default. (Cortefiel S.A. v. Miguel García Quintas, WIPO Case No. D2000-0140). The panel must decide whether the complainant has introduced elements of proof which allow the panel to presume that its allegations are true.

A. Identical or Confusingly Similar

Complainant is the owner of the trademark ESCHER GRAD registered in Canada on July 6, 1990. Complainant also owns the de facto trademark COBALT CTP SYSTEMS, under which Complainant has manufactured and sold a line of graphical high-resolution imaging products since 1999.

The Panel finds that Complainant’s trademark ESCHER GRAD is identical to the domain name <eschergrad.com>.

Regarding Complainant’s trademark COBALT CTP SYSTEMS, the Panel finds that the word “systems” in this case is not sufficient to distinguish the trademark COBALT CTP SYSTEMS from the domain name <cobaltctp.com>.

Therefore, the Panel finds that Complainant has proved the first element required in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel notes that proving “a negative proposition can be particularly difficult” and agrees “that the burden on a complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain names lies most directly within the registrant’s knowledge” and that “once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name” (The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064).

Complainant has proved that the domain names were initially registered in the name of Web Global Net. Afterwards, the domain name <eschergrad.com> was registered in the name of Web Master while the domain name <cobaltctp.com> was registered in the name of Printing World. Both domain names were then transferred to the current registrant, Tina Ujevica.

Complainant has also proved that the address provided by Web Global Net when registering the domain names <eschergrad.com> and <cobaltctp.com> corresponds to the address provided by Mr. Thornton when he entered into a Sales Agency Agreement with Complainant.

Complainant has also proved that, on the website of Web Global Net (“www.webglobalnet.net”), Mr. Thornton was described as being the “VP-Sales & Marketing”.

Furthermore, Complainant has proved that the Sales Agency Agreement was terminated by the Complainant and states that Mr. Thornton was not satisfied with the compensation he received from this termination. Therefore, it may be inferred that this was the reason why Mr. Thornton tried to disrupt the business of Complainant.

Since both domain names are now registered under the name of the same person (Tina Ujevica) and taking into account the use of the websites “www.eschergrad.com” and “www.cobaltctp.com”, it may be that Mr. Thornton has changed the name of the registrants of the domain names so as to hide the fact that he is the real registrant of the domain names.

Respondent failed to file a reply and therefore it did not bring to these proceedings any evidence to show that it has rights or legitimate interests in the domain names. Moreover, the Complainant has proved that there are no trademarks corresponding to the domain names in the name of Tina Ujevica, Printing World or Webmaster in the United States of America, the country in which Mr. Thornton is domiciled.

The doctrine of the cases Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903 and Dr. Ing. h. c. F. Porsche AG v. Del Favor Laurent, WIPO Case No. D2004-0481 would not apply in this case since it appears that no actual offering of goods and services has been made. Further, the websites linked to the domain names in dispute do not disclose the registrant’s relationship with the Complainant.

Furthermore, if the view taken in cases such as Motorola, Inc. v. NewGate Internet, Inc. WIPO Case No. D2000-0079 and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113 is applied to this case, Mr. Thornton has no rights or legitimate interests in the domain names as resellers of trademarked goods do not have rights or legitimate interests to use the trademark owner’s trademark in their domain names.

In view of the above, and in accordance with paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules transcribed above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

Consequently, the Panel finds that the Complainant has proved the second element required in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

As explained above, Mr. Thornton seems to have been the person responsible for the registration of the domain names.

Regarding the registration of the domain names, the fact that Mr. Thornton was an authorized sales agent at the time of the registration does not suffice to sustain that he may have registered the domain names in good faith. At the time he registered the domain names he knew that the trademarks ESCHER GRAD and COBALT CTP SYSTEMS belonged to the Complainant and he has not indicated or proved that he had authorization from the Complainant to register the domain names. Therefore, the registration of the domain names was an act of bad faith, especially when it is taken into account that he chose Complainant’s most important trademarks for his domain names. For this reason, it is possible to sustain that Mr. Thornton’s bad faith was concomitant to the registration of the domain names.

Furthermore, Mr. Thornton did not prove having made a bona fide offering of goods and services while the Sales Agency Agreement was in force, let along having complied with the requirements set forth in Oki Data Americas, Inc. v. ASD Inc., WIPO Case No. D2001-0903. Therefore, there are no reasons which would allow to conclude that Mr. Thornton may have acted in good faith when he registered the domain names.

Consequently, the Panel finds that the Respondent registered the domain names in bad faith.

In connection with the use of the domain names, from the print outs of the websites “www.eschergrad.com” and “www.cobaltctp.com” filed by the Complainant, it is evident that Mr. Thornton intends to disrupt Complainant’s business by attempting to attract Internet users to his websites by creating a confusion with Complainant’s trademarks; by falsely announcing that Complainant was no longer in business; by redirecting Internet users to Complainant’s competitors; by pretending to be the Complainant and requesting information from the Complainant’s clients, etc.

Furthermore, Complainant also proved that Mr. Thornton has provided false contact information, which further indicates registration and use of the domain name in bad faith.

In view of the foregoing and paragraphs 15(a), 14(a) and (b) and 10(d) of the Rules, the Panel finds that Respondent has registered and uses the domain names in bad faith.

Consequently, the Complainant has proved the third element required in paragraph 4(a) of the Policy.

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 domain names <eschergrad.com> and <cobaltctp.com> be transferred to the Complainant.

Miguel B. O’Farrell
Sole Panelist

Dated: November 14, 2005