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Vectrix Corporation v. Pendragon [2005] GENDND 681 (2 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Vectrix Corporation v. Pendragon

Case No. D2005-0316

1. The Parties

The Complainant is Vectrix Corporation, , Newport, RI, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.

The Respondent is Pendragon, , Dallas, TX, United States of America.

2. The Domain Name and Registrar

The disputed domain name <vectrix.com>is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2005. On March 29, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On March 29, 2005, Tucows 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 began on April 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2005. The Response was filed with the Center on May 2, 2005.

The Center appointed Dennis A. Foster as the sole panelist in this matter on May 12, 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.

On May12, 2005, the Complainant sent the Center a request to file a Supplemental Filing in reply to the Respondent’s Response, with the Filing itself already attached. The Panel examined the Complainant’s Supplemental Filing and, per paragraphs 12 and 10(d) of the Rules, decided to take it into consideration in this proceeding. However, mindful of paragraphs 12 and 10(b) of the Rules and of the need to be fair to both parties, the Panel issued Procedural Order No. 1 on May 19, 2005, in which it gave the Respondent until May 29, 2005, to respond to the Complainant’s Supplemental Filing if the Respondent so desired. The Order also moved back the due date of this Decision from May 26, 2005, to June 5, 2005. The Respondent chose not to respond to the Complainant’s Supplemental Filing.

4. Factual Background

The Complainant is a company planning to sell motor scooters powered by fuels other than petroleum. The Complainant has yet to put a product on the market. The Complainant has one registered VECTRIX United States of America trademark for selling and franchising motor scooters (trademark no. 2,632,033 registered on October 8, 2002).

The Respondent is either the individual Robert Warren or his alter ego, the entity Pendragon. The Respondent worked for a company called Vectrix Corporation which later became Vectrix Business Solutions, Inc. and was wound up in bankruptcy in 2001. This Company owned a VECTRIX trademark which still is listed by the United States Patent and Trademark Office as “live” (trademark no. 2,284,808 registered on October 12, 1999). The Respondent registered the disputed domain name, <vectrix.com>, on July 2, 1997 and since then has kept control of it, including under the name of Robert Warren or as Pendragon.

5. Parties’ Contentions

A. Complainant

- Complainant is in the business of developing and commercializing two-wheeled vehicles, such as scooters, that are battery powered.

- Complainant has substantially, continuously and exclusively used the name and mark VECTRIX since 1997 in connection with its business of designing, developing, testing and marketing low emission, battery powered, electric scooters (Complaint Annex C).

- In development since 1997, Complainant’s first series of VECTRIX branded battery powered electric scooters are set to hit the streets within the next year.

- Complainant and its VECTRIX branded electric scooters have received considerable media attention, including in the national media (Annex F).

- Complainant’s United States trademark VECTRIX provides constructive notice of the Complainant’s exclusive nationwide rights in the VECTRIX name in the United States. 15 U.S.C. Sect. 1072.

- The VECTRIX name is a fanciful mark comprised of a wholly coined and made up word.

- A review of the United States Patent and Trademark Office’s online database shows that Complainant owns the only active registration and only active pending applications for the distinctive trademark VECTRIX (Complaint Annex J).

- The Complainant has an active presence on the Internet. The Complainant registered the <vectrixusa.com> domain name on February 22, 2000 and has operated a website at this Internet address since at least as early as February, 2001. Complainant uses its VECTRIX website to advertise and promote its VECTRIX branded scooters as well as to provide information to its prospective customers and investors about Complainant’s company and its patented electric and hybrid scooter technology.

- Sometime after June 15, 2004, long subsequent to Complainant’s first use of the VECTRIX name and mark in 1997, long subsequent to Complainant’s registration of the VECTRIX mark with the United States Patent and Trademark Office in 2002, long subsequent to Complainant’s registration of the <vectrixusa.com> domain name in 2000 and establishment of its VECTRIX website at this location in 2001, long after Complainant’s VECTRIX branded scooters were featured in the national press, and without the consent of Complainant, Respondent registered the Internet domain name <vectrix.com> with Tucow’s, Inc. (Complaint Annex M).

- Respondent’s <vectrix.com> domain name does not currently resolve to an active website. A copy of the Error message received when <vectrix.com> is entered into a commercial Internet browser is attached hereto as Annex N.

B. Respondent

- The Dallas-based Vectrix Corporation (also doing business as Vectrix Business Solutions, Inc.) and its representative Robert Warren, registered the disputed domain name and began using it in conjunction with its e-commerce business on July 2, 1997.

- Complainant incorrectly claims Respondent first acquired the disputed domain name “on or after June 16, 2004”. As the whois record clearly shows, the record has a creation date listed as “02-jul-1997” and registration has never lapsed since that date.

- Respondent’s representative, Robert Warren, named in the complaint filed by Complainant, began working for the Dallas based Vectrix Corporation in April 2000 as Respondent’s Manager of Information Technology. Respondent subsequently conveyed the rights and responsibilities of the disputed domain name to Robert Warren individually on May 21, 2003 (Response Annex C).

- The disputed domain name is currently used to transfer data between previous employees of the Dallas-based Vectrix Corporation. The domain name is also used to forward web users searching for online games previously offered by the Dallas-based Vectrix Corporation via the disputed domain name at its primary web address to websites where these same games can now be found.

- Furthermore, Respondent maintains VECTRIX as its currently registered trademark with the U.S. Patent and Trademark Office as originally filed on March 17, 1998 and registered on October 12, 1999, (Serial no. 7,5451,629, Registration no. 2,284,808).

- The first time Respondent became aware of the Complainant was when Respondent received the Complaint itself.

- Complainant incorrectly claims the web page does not resolve. The web does resolve. The disputed domain name has been in use since it was acquired and has never ceased being used in one or more of the primary uses for domain names (web, email, ftp, telnet, etc.).

- To present a good-faith challenge under the UDRP, the Complainant would have to have a good-faith belief that Respondent “registered” the domain name “in bad faith”.

- Although the Complainant has a similar name and a legitimate claim to use the word VECTRIX, it does not have exclusive use of that word and does not have a legitimate claim to hijack the name from Respondent.

Complainant’s Supplemental Filing: Reply to Respondent’s Response

- Among Respondent’s false and misleading statements are statements that Vectrix Corporation of Dallas, Texas is a respondent in this action, which it is not.

- Vectrix Corporation of Dallas, Texas is not the owner of the <vectrix.com> domain name and thus cannot be a Respondent in this action. Vectrix Corporation of Dallas, Texas was the predecessor to Vectrix Business Solutions, Inc. (“VBSI”), a corporation whose operations terminated in 2001 through a Chapter 11 bankruptcy.

Respondent’s attempt to blur the line between himself and the former Vectrix Corporation of Dallas, Texas based on his limited period of employment is false and misleading, and his statement that Vectrix Corporation of Dallas, Texas or its successor VBSI is the Respondent is false.

Pursuant to the bankruptcy proceeding involving VBSI, any conveyance involving an asset of VBSI subsequent to the date of the bankruptcy filing would be subject to the approval of the Bankruptcy Court. 11 U.S.C. Sect. 363 (b)(1).

Neither Vectrix Corporation of Dallas, Texas nor VBSI are currently operating nor have they done so since 2001 and thus they are not using the <vectrix.com> domain name. (Complainant Supplemental Filing Annexes C and D).

- Although the <vectrix.com> domain name currently resolves to a website that contains links to <kewlbox.com> and <nstorm.com>, this website only became active in April 2005, after the subject Complaint was filed. (Complainant Supplemental Filing Annex F and Complaint Annex N).

- The games to which Respondent claims he is directing Internet users, i.e., “Kewlbox” and “N Storm” were sold by VBSI with the approval of the Bankruptcy Court on October 31, 2001, to Commotion Interactive, Inc. (Complainant Supplemental Filing Annex I).

- Respondent’s current website also contains a statement that the <vectrix.com> domain name is “for sale”, and to “make an offer to the webmaster”. (Complainant Supplemental Filing Annex F).

- Records from the United States Patent and Trademark Office (“USPTO”) database for Registration No. 2,284,808 for the mark VECTRIX list VBSI, not Respondent, as the owner of such registration. (Complainant Supplemental Filing Annex J). These records do not reflect any assignment of this registration to Respondent.

- Respondent’s False Statements to the Panel are further evidence of his bad faith registration and use of the disputed domain name.

- Respondent’s bad faith use of the disputed domain name is demonstrated by its passive holding of the domain name since 2003, and further by Respondent’s offer to sell the domain name on its website, which offer was posted after the Complaint was filed.

6. Discussion and Findings

In order to prevail in this proceeding and obtain transfer of the disputed domain name, paragraphs 4(a)(i-iii) of the Policy require that the Complainant show:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Complainant has exhibited a copy of its United States VECTRIX trademark registration: no. 2,632,033 dated October 8, 2002, in international class 35 for franchising electric land vehicles and in class 42 for technical consultations in the same field (Complaint Annex G). The Complainant has also exhibited copies of promotional material and press coverage for its VECTRIX scooters (Complaint Annexes C, D, E and F).

It is clear to the Panel that the Complainant does have trademark rights in the name VECTRIX. It is also clear that the disputed domain name, <vectrix.com>, is identical to the Complainant’s VECTRIX trademark. The Respondent does not dispute this point (Response page 3). The Panel therefore finds the Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy to show that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant contends the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent, per contra, contends that it does have rights and legitimate interests pursuant to paragraph 4(c)(i) of the Policy: “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”; and 4(c)(ii) of the Policy: “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”.

The Respondent contends: “….[ t]he Dallas-based Vectrix Corporation (also doing business as Vectrix Business Solutions, Inc.) and its representative Robert Warren, …..registered <vectrix.com> and began using it in conjunction with its e-commerce based business on July 2, 1997.”

The Respondent goes on to contend that: “The domain [name] is currently used to transfer data between previous employees of the Dallas-based Vectrix Corporation. The domain is also used to forward web users searching for online games previously offered by the Dallas-based Vectrix Corporation via <vectrix.com> at the primary web address to websites where these same games can now be found.”

Other than a VECTRIX trademark registration not in the Respondent’s name, and some pay slips from Vectrix Business Solutions, Inc. where the Respondent worked, the Respondent did not produce any evidence to support its contentions. The Complainant, however, has produced evidence substantially disproving the Respondent’s contentions under both 4(c)(i) and 4(c)(ii). The Complainant has shown that the Respondent has not used the disputed domain name in the recent past, and that only after the Complaint was filed did the Respondent try to use the disputed domain name to (a) forward Internet users to other gaming sites; and (b) try to sell the disputed domain name. But these belated uses are not relevant under paragraph 4(c)(i) of the Policy because they occurred after the Respondent knew of this dispute (Complaint Supplemental Filing Annexes F and G).

As to the Respondent’s contention under paragraph 4(c)(ii) of the Policy that it has been commonly known by the name “Vectrix”, the Complainant has shown that Vectrix Business Solutions, Inc. was liquidated in bankruptcy proceedings in the state of Texas in 2001 and no longer exists. (Complainant Supplemental Filing Annex C). The Respondent is variously called Pendragon or Robert Warren, not Vectrix.

Thus the Panel notes that there is little concrete evidence for finding the Respondent has rights or legitimate interests in the disputed domain name under either paragraph 4(c)(i) or paragraph 4(c)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant claims that the Respondent’s holding the disputed domain name without using it for some years prior to receiving notice of this dispute is evidence of bad faith. In support of this contention, the Complainant cites some well-known cases under the Policy such as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) and August Storck KG v. Tony Mohamed, WIPO Case No. D2000-0196 (May 3, 2000). However, as the Complainant itself notes, these decisions turned on the complainants having strong trademarks at the time the respondents registered the disputed domain names: the trademarks TELSTRA and WERTHER’S respectively. The Complainant’s VECTRIX trademark does not come close to being a strong trademark: the Complainant claims to have begun business in 1997 but has yet to bring one of its scooters to market. The promotional material and media coverage the Complainant provided are all from the past couple years and are addressed to a limited public (Complaint Annexes C through G). Worse yet for the Complainant, the disputed domain name was registered July 2, 1997 at a time when the Complainant was unknown-- (The Complainant contends the Respondent registered the disputed domain name on June 8 or 15, 2004, Complaint Annex M, but the Whois shows only that the Respondent modified the registration contact info details around that time). Thus the Panel does not see how these cases decided on passive holding of a strong or famous trademark can be applied here.

Next, according to the Complainant, the fact that the disputed domain name incorporates the Complainant’s entire trademark is evidence of bad faith. The Panel rejects this reasoning as irrelevant here: the Panel does not see how the Respondent could have been planning to profit off the goodwill of the Complainant in registering the disputed domain name in 1997 since the Complainant had not done any business or created any good will and in all likelihood did not even exist at that time. The Complainant would like the Panel to accept its contention that the Respondent registered the disputed domain sometime in 2004, but the Complainant has failed to show this. The Respondent claimed to have had the “responsibilities” of the disputed domain name transferred to it from its former employer in 2003 but, as the Complainant itself points out, there is no evidence to support this either (Complainant Supplemental Filing, page 5). Thus the Panel can only conclude the Respondent or an alter ego has always controlled the disputed domain name from its registration on July 2, 1997, (Complaint Annex A). The Complainant does not succeed in showing bad faith under paragraph 4(b)(iv) of the Policy.

In its Supplemental Filing, the Complainant also contends the Respondent should be found to be in bad faith because it pretends to represent a company (Vectrix Business Solutions, Inc. or “VBSI”) that was wound up in bankruptcy in 2001. The Panel finds that the Respondent, proceeding pro se, should not be charged with knowing all the ramifications of liquidating a company in bankruptcy, a most complex realm of the law. While it is not clear how the Respondent kept the disputed domain name even after its former employer’s bankruptcy, it is apparent that the Respondent has for years, and probably from initial registration, controlled the disputed domain name.

The Panel believes the Respondent may well be in bad faith vis-à-vis its former employer VBSI or the Bankruptcy Court in Texas, but not the Complainant. The disputed domain name may or may not ought to have been included in the distribution of property to creditors during the Respondent’s former employer’s liquidation. However, the Panel does not see how this concerns the Complainant. The Complainant was not an interested party in the liquidation of the Respondent’s former employer.

The Complainant contends the Respondent had at least constructive notice of the Complainant’s VECTRIX trademark when the Respondent registered the disputed domain name on a date that the Complainant alleges was in 2004. The Complainant’s contention on constructive notice is unconvincing since the Respondent’s employer had a VECTRIX trademark registration that predates (October 12, 1999) the Complainant’s own trademark registration (October 8, 2002), and the Respondent itself has a domain name registration that predates the Complainant’s own <vectrixusa.com> domain name registration (July 2, 1997 v. February 22, 2000). The Complainant was able to get its trademark registration because selling and franchising battery powered scooters are entirely different goods or services than Respondent’s former employer’s computer services. It is not apparent that the Respondent ever knew of the Complainant and its trademark or ever had any designs to profit from whatever goodwill the Complainant may have developed. It is ironic that the Complainant has doubled back to try to allege constructive notice when in fact the Respondent and its employer had both a VECTRIX trademark and domain name before the Complainant did. And in any case, the cases decided under the Policy that the Complainant cites have constructive notice as only one of several factors that contributed to a finding of bad faith (the cases are: eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (April 11, 2001); and Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002).

Finally, the Complainant contends the Respondent’s offer on the Internet to sell the disputed domain indicates bad faith in registration and use under paragraph 4(b)(i) of the Policy. However, to be applicable, that Policy provision needs the Respondent to have registered the domain name with the intention of re-selling it to the Complainant or a competitor for much more than the Respondent paid for it. That can not be the case here because the Respondent only offered to sell the disputed domain name in April, 2005, some eight years after the Respondent registered it and almost a year after even the Complainant contends the Respondent registered the disputed domain name. The Panel finds the time lapse precludes the Respondent having intended to re-sell the disputed domain name to the Complainant or a Competitor.

The Panel finds the Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy by showing the Respondent registered and is using the disputed domain name in bad faith. Most of the activity associated with the disputed domain name, <vectrix.com>, predates the Complainant’s registration of its VECTRIX trademark.

Reverse Domain Name Hijacking

The Respondent has requested the Panel issue a finding that the Complainant brought the Complaint in bad faith per paragraph 15(e) of the Rules. Inasmuch as the Complainant faltered only under paragraph 4(a)(iii), the Panel believes it is self-evident that this is not a case of reverse domain name hijacking.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster
Sole Panelist

Date: June 2, 2005