Irish Institute of Purchasing and Materials Management (IIPMM) v. Association for Purchasing & Supply

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Irish Institute of Purchasing and Materials Management v. Association

for Purchasing and Supply, Owen O’Neill

Case No. D2001-0472

1. The Parties

The Complainant in these Administrative Proceedings is the Irish Institute

of Purchasing and Materials Management a limited company organized and existing

under the laws of Ireland having its registered office at 5 Belvedere Place,

Dublin 1, Ireland.

The Respondent is the Association for Purchasing and Supply, Owen O’Neill of

John Player House, South Circular Road, Dublin 8, Ireland.

2. The Domain Name and Registrar

The domain name in issue in these Administrative Proceedings is <iipmm.com>.

The registrar with which the domain name is registered is Register.com (hereinafter

"the Registrar")

3. Procedural History

On March 30, 2001, the Complaint was received by the WIPO Arbitration and Mediation

Center (hereinafter "the Center") by e-mail and the hard copy was received on

April 2, 2001.

On April 3, 2001, the Center sent an acknowledgement of receipt of the Complaint

to the Complainant by e-mail.

On April 6, 2001, the Center sent a request for Register Verification to the

Registrar. On April 11, 2001, the Registrar responded to the Center and stated

that it was not yet in receipt of the Complaint sent by the Complainant; confirmed

that it is the registrar of the said domain name <iipmm.com>; confirmed

that the Respondent was at that time the registrant of the said domain name;

provided contact details for the Respondent including the administrative contact

and the technical contact for the said domain name; confirmed that the Uniform

Domain Name Dispute Resolution Policy (hereinafter "the Policy") applied to

the said registration and that the said registration was active.

On April 12, 2001, the Center reviewed the Complaint and was satisfied that

the Complaint complied with the Rules for Uniform Domain Name Dispute Resolution

Policy (hereinafter "the Rules") and the WIPO Supplemental Rules for Uniform

Dispute Resolution Policy (hereinafter "the Supplemental Rules") and that the

appropriate fees had been paid by the Complainant.

On April 12, 2001, the Center sent a Notification of Complaint and Commencement

of Administrative Proceeding relating to the said domain name <iipmm.com>

to the Respondent by post/courier (with enclosures) and by e-mail (Complaint

without attachments). A copy of said Notification was sent to the authorized

representative of the Complainant by e-mail. Further copies of said Notification

were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN")

and to the Registrar.

Said Notification of Complaint and Commencement of Administrative Proceeding

inter alia advised the Respondent that the Administrative Proceedings

had commenced on April 12, 2001, and that the Respondent was required to submit

a Response to the Center on or before May 1, 2001.

On April 30, 2001, the Respondent filed a Response and on May 1, 2001, the

Center sent an Acknowledgement of Receipt (Response) to the Respondent.

On May 8, 2001, the Center invited James Bridgeman to act as Administrative

Panel in these proceedings.

On May 8, 2001, having received a Statement of Acceptance and Declaration of

Impartiality from the said James Bridgeman, the Center proceeded to appoint

this Administrative Panel consisting of a single member.

On May 8, 2001, the Center sent a Notification of Appointment of Administrative

Panel and Projected Decision Date to the parties and advised that absent exceptional

circumstances, the Administrative Panel was required to forward his decision

to the Center by May 22, 2001. On the same date, the case file was transferred

to the Administrative Panel.

In the view of the Administrative Panel, the proper procedures were followed

and the Panel was properly constituted.

4. Factual Background

The Complainant was established as a non-profit organization in 1971. It was

incorporated in Ireland in 1975. The Complainant is a professional association

for purchasing and supply executives in the Republic of Ireland. The Complainant

has over 1,500 members and students nationally and internationally. The Complainant

provides educational, training and resource services to its members. In particular,

it operates diploma and certification programs and organizes various seminars,

conferences and events throughout the year to keep its members in touch with

latest developments in purchasing and supply.

The Complainant publishes the monthly publication The Report on Ireland

in association with NTC Publications and NCB Stockbrokers. The Report on Ireland

is a near term indicator of economic activity in the manufacturing sector in

Ireland. The Complainant is also associated with the publication of a magazine

entitled IPS (International Purchasing and Supply) Magazine which is

published every two months and is distributed free of charge to the Complainant’s

members.

The Complainant has established numerous affiliations with similar international

organizations, including the International Federation of Purchasing and Materials

Management which is based in Austria.

In 1997, the Complainant registered the domain name <iipmm.ie> and established

a web site at that address.

The Respondent was formerly an employee of the Complainant from 1993 to 1996

and he served on the National Council of the Complainant for a number of years.

The Respondent subsequently commenced business as the Association for Purchasing

and Supply otherwise known as APS (hereinafter referred to as "APS") in 1997

and this name was registered as a business name with the Irish Companies Registration

Office in 1998. More recently the Respondent has initiated a project called

the International Institute for Purchasing and Materials Management. The Respondent

registered said domain name <iipmm.com> on July 4, 2000 in connection

with this project.

5. Parties’ Contentions

A. Complainant

In support of its application for transfer of the said domain name, the Complainant

claims to have invested a significant amount of time and money in developing,

marketing and promoting its presence on the Internet at the said country code

(ccTLD) domain address <iipmm.ie>. The web site has emerged as an integral

part of the Complainant’s operations, as it allows the Complainant to constantly

keep in contact with, and update, its members online and attract potential new

members. The Complainant’s web site has allowed it to offer its services to

a wider spectrum of businesses and organizations, and enabled the Complainant

to offer new facilities such as an online discussion group forum and a sourcing

database.

The Complainant submits that the Respondent offers similar, if not identical

services to the Complainant including training and educational services.

The Complainant has submitted a print out of a web site established by the

Respondent accessible via said domain name <iipmm.com> and comments

that the only content posted was an advertisement for the services of the Respondent's

said APS business.

On October 24, 2000, the Complainant sent a letter to the Respondent by facsimile

and post, informing him of its intention to initiate a complaint under the Policy

and Rules, if he did not transfer said domain name <iipmm.com> to the

Complainant. The Respondent replied in writing on the same day, and alleged

that the Complainant’s claims were unfounded.

The Respondent registered the business name <IIPMM> with the Irish Companies

Registration Office on October 24, 2000, the same day that the Complainant informed

the Respondent of its intention to initiate a complaint under the Policy and

Rules.

At some point in time after October 24, 2000, the Respondent amended the content

contained on the <iipmm.com> web site, and began to use the site to promote

the services of a new organization called the <International Institute for

Purchasing and Materials Management> (hereinafter "the International Federation")

by way of a banner advertisement and link to the web site maintained by the

Respondent to promote his business trading as APS.

The Complainant, along with other organizations, is an affiliate of the International

Federation of Purchasing and Management Materials. This is an international

forum for purchasing, materials management, logistics, supply chain management

and strategic sourcing and it maintains a web site at <ifpmm.co.at/ifpmm>.

The Respondent applied for membership of this International Federation in mid

2000. The Federation informed the Respondent that the Complainant had already

been appointed the official member of the International Federation for Ireland,

and the International Federation referred the Respondent back to the Complainant.

The Complainant submits that the Respondent has registered a domain name <ifpmm.com>

and has arranged that the said domain name defaults to the Respondent’s web

site at <iipmm.com>.

The Complainant submits that the said domain name is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights and

states that during the last thirty years, the Irish Institute of Purchasing

and Materials Management has established and built up a substantial reputation

in its name and initials. Due to its extensive use of the marks the <Irish

Institute of Purchasing and Materials Management> and the <IIPMM>,

such marks have acquired substantial reputation and recognition in Ireland and

internationally among similar institutions and members and are immediately associated

with the Complainant by persons within the relevant industry.

In accordance with Section 10 (4)(a) of the Irish Trade Marks Act 1996, the

Complainant has acquired rights in these unregistered trademarks and service

marks <Irish Institute of Purchasing and Materials Management> and the

<IIPMM>, Under Section 10(4), the Complainant has unregistered trademarks

in its name and initials, and claims to be entitled to take steps to prevent

any other party from registering the Complainant’s name and initials as trade

marks in Ireland for educational, training and management services.

In addition, due to the Complainant's extensive reputation, goodwill and investment

in its name and initials, the Complainant is deemed to have attained common

law rights under Irish law in those marks and would be entitled to bring an

action for passing off against any party which sought to infringe those rights.

The Complainant submits that there have been numerous other UDRP panel decisions

where it has been held that the relevant complainant's common law rights in

marks satisfied the test as set out in paragraph 4 of the Policy viz. Adobe

Systems Incorporated v. Domain OZ (WIPO

Case No. D2000-0057), Oxygen Media, LLC v. Primary Source (WIPO

Case No. D2000-0362) and ESAT Digifone Limited v. Michael Fitzgerald

Trading as Telco-Resources (WIPO Case

No. D2000-0602).

The Complainant submits that the domain name <iipmm.com> is identical

or confusingly similar to the Complainant’s unregistered trademark and service

mark <IIPMM> and that the addition of ".com" element is not

a distinguishing factor and should be disregarded. It has already been noted

that the services of the Respondent are identical, if not similar, to the Complainant's

services, i.e. education, training and business management, and that

the Respondent's APS business is in direct competition with the Complainant.

The Complainant further submits that the Respondent has no rights or legitimate

interests in respect of the said domain name <iipmm.com>. The Complainant

submits that the Respondent has not been commonly known by the domain name.

Furthermore, due to the fact that the Respondent was formerly in the employment

of the Complainant, he was fully aware of the Complainant’s extensive use and

rights in its name and initials. The Respondent was also aware of the Complainant’s

established goodwill and reputation in its name and initials.

The Complainant submits that the Respondent did not register the business name

<IIPMM> until after the Respondent had been notified of the Complainant’s

intention to make a complaint under the Policy. Furthermore, the Respondent

altered the <iipmm.com> web site in order to attempt to legitimize its

registration and use of the domain name.

The Complainant submits that it was not aware of the establishment of any <International

Institute for Purchasing and Materials Management> before October 24, 2000.

The Complainant submits that the <iipmm.com> web site now promotes the

services of the <International Institute for Purchasing and Materials Management>,

however, there is still no significant content present on the web site. The

Complainant submits that the Respondent has developed only a bare presence on

the web site in an attempt to justify his initial bad faith registration of

the domain name. The Complainant submits that it is unlikely that the Respondent

intends to offer any bona fide service through his web site.

The Respondent has no registered trademark or service mark under Irish law,

nor does he possess any legitimate intellectual property rights in the name

of the International Institute for Purchasing and Materials Management or the

initials <IIPMM>.

The Complainant submits that the said domain name was registered and is being

used in bad faith. The Complainant submits that it has not entered into any

licensing arrangement or joint venture with the Respondent in relation to any

aspect of the Complainant's business, including the registration of Internet

domain names. Initially after leaving the employment of the Complainant, the

Respondent was still a member of the National Council of the Complainant. However,

the Respondent was later asked to absent himself from the National Council as

he had established a competing association and accordingly the Complainant was

concerned that this would inevitably result in a conflict of interest. The Complainant

submits that it has had little communication with the Respondent since he left

its employment and membership of its Council, and under no circumstances has

it entered into any formal relationship with the Respondent.

The Complainant believes that, among other things, the Respondent is deliberately

preventing the Complainant from operating a web site incorporating one of its

common law marks and is seeking to mislead the existing and potential members

and students of the Complainant.

In support of the Complainant's allegation that the Respondent actions were

and are in bad faith, the Complainant refers to the decision of the learned

panel in Tourplan (e-Resolution Case No. AF-0096) wherein the establishment

of a web site by a former employee at a domain name which incorporated the company

name of his former employer was held to be sufficient evidence of bad faith

under the Policy, even where no offer of sale of the site had been made by the

Respondent. This finding was re-affirmed in the WIPO Panel decision in ESAT

Digifone Limited v. Michael Fitzgerald Trading as Telco-Resources (WIPO

Case No. D2000-0602).

The Complainant submits that as the domain name and the name of the organization

being promoted by the Respondent on his web site are confusingly similar, if

not identical, to the common law marks of the Complainant, there is a strong

likelihood that the existing and potential members and students of the Complainant

will assume that the Respondent's web site is controlled by or endorsed by the

Complainant in circumstances where the Complainant has no control over the content

or presentation of such a site. Thus, the Complainant would be unable to prevent

any harm to its valuable reputation and goodwill, which may be caused by such

confusion.

The Complainant submits that if the Respondent sought to operate a bona

fide service on the web site, the registration by the Respondent of the

said domain name <iipmm.com> and the establishment of a web site offering

such services under a confusingly similar domain name would constitute a deliberate

attempt to disrupt the business of a competitor.

The Complainant also contends that as the Respondent is a former employee of

the Complainant and he was aware of the Complainant’s common law marks, this

fact rules out the possibility that the Respondent's use of the domain name

was in some way honest, accidental or in good faith. The Respondent’s use of

the Complainant’s mark is deliberate and in bad faith.

The Complainant further submits that the Respondent registered the said domain

name with a view to preventing the Complainant from operating a web site incorporating

one of its common law marks. The Complainant contends that this has been done,

either in the hope of disrupting the Complainant’s business or attempting to

profit from an association with the marks.

In Tuxedos By Rose v. Hector Nunez (NAF Case No. FA0007000095248) it

was held the fact that the Respondent and the Complainant were direct competitors

in the tuxedo sales and rental market, meant that the respondents registration

of domain names which were confusingly similar or identical to the Complainants'

common law marks primary purpose was to disrupt the business of the competitor

and clear evidence of bad faith.

In SGS Société Génénale de Surveillance S.A.

v. Inspectorate (WIPO Case No. D2000-0025)

it was held that as the Respondent and Complainant were direct competitors,

that the registration by the respondent of the disputed domain names, which

were confusingly similar or identical to the complainants' marks, were made

in bad faith.

The Complainant has submitted that the <iipmm.com> web site has always

prominently displayed the banner advertisement of the Respondent and linked

to his homepage. It has already been observed that the Respondent is a direct

competitor of the Complainant as they each provide identical, if not similar,

services in a common market.

In Easyjet Airline Company Ltd v Andrew Steggles (WIPO

Case No. D2000-0024) the respondent had placed a link on his web site at

the disputed domain address to the web site of a competitor of the complainant.

The administrative panel held that due to such actions by the Respondent, the

domain name used as the address for the web site was primarily registered to

disrupt the business of the Complainant and therefore it was registered and

used in bad faith. The Complainant submits that the actions of the Respondent

in casu in relation to the <iipmm.com> domain name address are

identical to the actions of the Respondent in the Easyjet case and it

would follow that the Respondent’s registration of the disputed address was,

and is, primarily for the purpose of disrupting the Complainant's business and

also clear evidence of bad faith.

As the Respondent has also registered the domain name <iipmm.com> and

has not even sought to use that site for a legitimate purpose, the Complainant

submits that such unexplainable pattern of behavior by the Respondent provides

further evidence that Respondent registered and is using both domain names in

bad faith. To the Complainant’s knowledge, the Respondent has no registered

trademark or service mark under Irish law, nor does he possess any legitimate

intellectual property rights in the initials <IFPMM>.

In conclusion, it would appear that the Respondent’s only objective in registering

both domain names was to intentionally attempt to attract for financial

gain, internet users to the Respondent’s web site or other on-line location,

by creating a likelihood of confusion with the Complainant’s marks. The Complainant

contends that this has been done, either in the hope of disrupting the Complainant’s

business or attempting to profit from an association with the mark.

The Complainant also contends that the Respondent sought to prevent the Complainant

from reflecting its mark in a corresponding domain name and that the domain

name <iipmm.com> was registered for the purpose of disrupting the business

of the Complainant being a competitor.

B. Respondent

The Respondent submits that he successfully completed a Diploma in Purchasing

and Materials Management in Waterford Regional Technical College, Ireland in

1992. At that time, the Respondent also served, on a voluntary basis, with the

South East Branch of the Complainant and was elected as a representative to

the National Council of the Complainant.

The Respondent claims that while he was employed by the Complainant between

1993 and 1996, he was engaged in the co-ordination of activities of the Complainant

and developed innovative workshops and events. He was instrumental in the establishment

of the Complainant’s distance learning option for its diploma course. The Respondent’s

work also entailed liaising with the International Federation.

In 1996, the Respondent left the employment of the Complainant to set up his

own business. The Respondent submits that he left on good terms and was re-elected

to the Complainant’s National Council at the subsequent Annual General Meeting

and he continued to serve on a voluntary basis.

When the Respondent left the Complainant’s employment, he set up a training

company called Logistics Training and Consultancy Limited, the sole activity

of which was to provide alternative public training seminars and consultancy

services to individuals and organisations in Ireland. The Respondent subsequently

changed his focus and established the APS business in 1998 to provide a broader

range of services. APS is membership based. The Respondent maintains a web site

for his APS business located at <irishpurchasing.com>. The Respondent

has been trading successfully as APS for three years and has a customer and

membership base in excess of 200. Logistics Training and Consultancy Limited

no longer trades.

The Respondent submits that when his new business was up and running, he resigned

from the National Council of the Complainant in order to avoid any potential

conflict of interest. The Respondent has had little or no contact with the Complainant

since then.

The Respondent comments that in its 26 year history, the Complainant has not

seen fit to register either of the said marks. The Respondent submits that until

September of last year, it appears that the Complainant only saw fit to register

one domain name in relation to its business, being <iipmm.ie>, "ie"

being the ccTLD for Ireland. The Complainant conducts all or almost all of its

business in Ireland. The Respondent states that the Complainant only saw fit

to register <iipmm.org> in September 2000, after it became aware of the

Respondent’s ownership of the domain name the subject of this dispute.

The Respondent submits that having successfully developed the business of APS

in Ireland, in or about early April 2000, he enquired about the possibility

of gaining membership of the International Federation. At that time there was

no formal application process and membership essentially required the imprimatur

of any existing member within the country in question. However, the Respondent

understands that the Complainant (the resident member of the International Federation

for Ireland) vetoed the application of the Respondent.

Following this refusal by the International Federation, the Respondent sought

alternative methods to create an international network for those interested

in sharing and learning from those participating in purchasing and materials

management in other countries. The Internet was an obvious medium for such a

forum and the Respondent therefore sought, in good faith, to secure an appropriate

domain name.

The Respondent chose the name "International Institute for Purchasing

and Materials Management" as the working title for this new initiative

as it properly describes the nature of the Respondent’s business.

As regards the "international" character of the Respondent's business, the

Respondent submits that unlike the Complainant, the Respondent’s business would

be focussed internationally and not on the Irish market. The Respondent claims

that since the establishment, the <International Institute for Purchasing

and Materials Management> has already gathered membership and support from

20 different countries/regions around the globe viz. Australia, Brazil,

Chile, Croatia, Finland, France, Germany, Great Britain, India, Ireland, Italy,

Malaysia, New Zealand, Northern Ireland, Norway, Slovakia, Spain, Sweden, Switzerland,

and the USA. Among those registered to-date with the International Institute

for Purchasing and Materials Management are students, consultants, material

managers, buyers, academics, company directors, export managers and operations

managers. The Respondent has offered to provide the Panel with contact details

for its membership base.

The Respondent submits that the primary objects of the Respondent’s organization

are the sharing international experience, learning, academic excellence and

the promotion of best practice. The Respondent considered that these goals were

best reflected by the word "Institute".

The Respondent considered that a new organisation of this kind would not succeed

if it tried to work outside the common parlance and understanding of the profession.

The Respondent found for example, that a search on the Internet returned approximately

145,000 search results for the phrase "purchasing and materials management".

The Respondent argues that this indicates a universal and common understanding

of the terminology. The Respondent submits that this terminology is used by

the only other global organisation in this sphere viz. the International Federation

as well as other national institutes such as the Malaysian Institute for Purchasing

and Materials Management.

In these circumstances, the Respondent submits that he chose, in good faith,

to register the said domain name <iipmm.com> because a domain name internationalinstituteforpurchasingandmaterialsmanagement.com

would obviously be far too long as an Internet address. Therefore, the Respondent

investigated whether an abridged version was available. The domain names <iipmm.com>,

<iipmm.net> and <iipmm.org> were available so the Respondent purchased

the ".com" address as he felt it was the most globally recognised

prefix for an international organisation offering online services to those in

the purchasing and materials management industry world-wide.

The Respondent states that he did not register <iipmm.net> or <iipmm.org>

at this time even though both names were then available. The Respondent notes

that the Complainant subsequently registered <iipmm.org> on September

5, 2000, after becoming aware of the Respondent’s registration of <iipmm.com>.

The Respondent submits that since the Complainant is a non-profit organisation,

in the unlikely event that the Complainant would wish to extend its services

beyond Ireland, its choice of a domain name with the general Top Level Domain

(gTLD) ".org" would be appropriate as ".org" domain names

are typically used by non-profit organisations. The Respondent claims that he

registered both <iipmm.com> and <irishpurchasing.com> on the same

day, July 4, 2000, and he claims to have registered <ifpmm.com> on

the following day in good faith with a view to establishing an international

forum for purchasing and materials management to complement <iipmm.com>.

The Complainant submits that the International Federation is a non-profit organisation

which uses the domain name <ifpmm.co.at> and has recently acquired the

domain name <ifpmm.org>. The Respondent refers to the Complainants comments

regarding the International Federation and the registration by the Respondent

of the domain name <ifpmm.com> and argues that the Complainant has implied

that the International Federation regards the Respondent as "squatting"

on that domain name. In the ten months that the Respondent has held the domain

name <ifpmm.com>, the International Federation has not indicated any difficulty

with the Respondent holding the domain name and the Respondent does not anticipate

any such difficulty. The Respondent states that it may well be possible to develop

mutually beneficial links between the International Federation's web site and

the Respondent’s web site.

The Respondent submits that the Complainant is incorrect in alleging that the

Respondents APS’s services are still predominantly displayed on the web site.

APS never promoted its services on the <iipmm.com> site but he did for

a period previously provide a link to the APS web site. This made it perfectly

clear to users of the <iipmm.com> site that the APS web site was independent

of the <International Institute for Purchasing and Materials Management>.

The link was provided to APS in good faith to acknowledge the seed capital and

resources provided by APS in developing the International Institute for Purchasing

and Materials Management.

As regards use of the domain name prior to notification of this dispute, the

Respondent received its first notice of the Complainant’s interest in the <iipmm.com>

name when he received a letter from the Complainant dated October 24, 2000.

Although the Respondent was primarily focused on developing the <irishpurchasing.com>

web site, prior to October 24, 2000, the Respondent did take preliminary steps

to establish a web presence at the domain name <iipmm.com>. To this end,

in July/August 2000, the Respondent entered discussions with a firm of consultants

regarding the establishment of a web site at the <iipmm.com> domain and

these discussions also included training of the Respondent in the creation and

maintenance of the web site.

The Respondent also obtained permission to use material from Professional Purchasing

Magazine on the <iipmm.com> web site. In this regard, the Respondent has

submitted a memorandum dated September 4, 2000, from said firm of consultants

which the Respondent claims clearly illustrates that the Respondent was working

towards developing content, preparing a business plan and organising a formal

launch for the <iipmm.com> web site some months before the Respondent

became aware of the Complainant’s challenge to the Respondent’s use of the domain

name.

The Respondent claims that it was only upon receipt of the Complainant’s letter

of October 24, 2000, that the Respondent realised the Complainant’s concerns.

In light of the significant time and effort the Respondent was putting into

developing the web site and having taken the advice of consultants from September

4, 2000, the Respondent immediately moved to a "holding page" at the

address accessible via said domain name, to demonstrate his intention

of establishing the <International Institute for Purchasing and Materials

Management>. To further protect the position of the International Institute

for Purchasing and Materials Management in the event of any proceedings subsequently

being issued on foot of the Complainant’s letter, the Respondent at the same

time registered the business name <IIPMM>. He claims to have been perfectly

entitled to do so under the Registration of Business Names Act, 1963.

The Respondent claims that the placing of a holding page on the web site and

the registration of the business name were done in good faith with a view to

protecting the Respondent’s position pending the issuance of ICANN proceedings

by the Complainant. While the Respondent did not regard the claims made in the

Complainant’s letter as having any merit and he responded accordingly, the Respondent

nevertheless at all times intended to fully defend any proceedings. The Respondent

had at all material times intended to place substantial content on his web site

as is evidenced by the memorandum from the said consultants of September 4,

2000. The Respondent claims that the Complainant’s letter merely precipitated

the bona fide actions of the Respondent.

The Respondent first received official notification of these Administrative

Proceedings on March 30, 2001, some six months after the Complainant’s initial

letter and the Respondent continued in the development of all aspects the <iipmm.com>

business in the intervening period. However, since the proceedings have been

initiated, the Respondent has been forced to cease his development plans for

the <International Institute for Purchasing and Materials Management>

and his business on his web site at <iipmm.com>. The Complaint is damaging

to the progress of the establishment of the <International Institute for

Purchasing and Materials Management> and has forced a state of "limbo"

to exist in relation to further development of the www site pending the decision

of this Administrative Panel. Further, the Complaint has forced the Respondent

to incur unforeseen costs in defending the Complaint and therefore drawing on

reserves that would otherwise be available to develop the <International

Institute for Purchasing and Material Management>.

As to the Complainant's claim that the said domain name is identical or confusingly

similar to a trademark or service mark in which Complainant has rights, the

Respondent contends that both the name <Irish Institute of Purchasing and

Materials Management> and in the initials <IIPMM> would be likely to

encounter problems with registration under Section 8(1) of the Trade Marks Act

1996. In its 26 year history, the Complainant has never registered its alleged

trade marks in Ireland or elsewhere and the Respondent concludes that the failure

to secure any such registrations indicates the inherent weakness of the marks

concerned and that they are probably not registrable.

The Respondent submits that the Complainant has not registered the business

name <IIPMM> and does not normally trade under the name <IIPMM>

unless additional and accompanying reference is made to its full title <Irish

Institute of Purchasing and Materials Management>. The Complainant has provided

no evidence of use of the initials <IIPMM> without accompanying reference

to the full name of the Complainant. The Respondent contends that the use of

the initials <IIPMM> would be meaningless to the general public and to

international players in the purchasing and materials management industry in

the absence of accompanying reference to the full name of the Complainant.

The Respondent further submits that the Complainant does not ordinarily promote

itself as <IIPMM> and the letters <IIPMM> have not acquired a distinctive

character in relation to the Complainant. For example, the Complainant is also

commonly known as <the Institute>, <the Institute of Purchasing>,

<the Institute of Purchasing and Materials Management>, <the Purchasing

Institute>, and <the Purchasing and Materials Management Institute>.

Further, in an international context within the purchasing and materials management

industry, the letters <IIPMM> would not be likely to trigger an association

with the Irish Institute.

The Respondent trades under the name <iipmm.com> and <International

Institute for Purchasing and Materials Management>. The Complainant’s

name is <Irish Institute of Purchasing and Materials Management>.

The only common words between the two names are <Institute> and <Purchasing

and Materials Management> which are purely descriptive terms in common parlance

in the industry and not capable of distinguishing one entity from another. The

key distinguishing factors between the names and between the business models

of the two organizations are the geographic indication of the respective business

focus of the two entities, International for the Respondent and Irish for the

Complainant. The two entities are focussed on different geographical markets.

The Complainant has provided no evidence of any confusion between the Complainant

and the Respondent’s web site <iipmm.com>. The Respondent has received

no communications from any parties who confused the International Institute

with the Complainant. The Complainant merely claims in its Complaint that the

International Institute is "immediately associated with the [Irish] Institute

by persons within the relevant industry" but offers no substantiation whatsoever

for this claim.

The main publication of the Complainant is the International Purchasing

and Supply Magazine, published under the title IPS without any obvious

reference to <IIPMM>.

The Respondent refers to the decisions of the administrative panels in E.I.

du Pont de Nemours and Company –v- Avant Garde Composition (WIPO

Case No. D2000-0130) and Infospace.com Inc. v. Infospace Technology Co.

Ltd. (WIPO Case No. D2000-0074) in

support of his claim relating to the generic character of the Complainants trademark

and service mark.

The Respondent submits that in the present case, the Complainant has established

no evidence of confusion in the record.

The Complainant quotes several ICANN decisions in support of its case. Notwithstanding

that previous decisions of the Panel are not binding, for the sake of completeness,

the Respondent contends that each of the decisions cited can be distinguished.

For example:

ESAT Digifone Ltd –v- Michael FitzGerald t/a Telco-Resources (WIPO

Case No. D2000-0602) This case was not defended by the Respondent and has

therefore little persuasive value. The complainant had a registered trademark

and several pending trademarks in the name "DIGIFONE". This was a

clear cyber-squatting case with no claim of legitimate rights by the Respondent.

Adobe Systems Inc –v- Domain OZ (WIPO

Case No. D2000-0057) and Oxygen Media LLC –v- Primary Source (WIPO

Case No. D2000-0362). The Respondent submits that neither of these cases

was defended by the respective respondents and all allegations of the complainants

were therefore accepted by the administrative panels involved. The first case

involved abuse of the trademark <Adobe> which is an extremely well-known

brand world-wide. The second case involved blatant typo-squatting. In both cases,

the complainants had extensive pending trade mark applications and the existence

of unregistered rights was not a deciding factor in the Panel’s decision in

light of the clear and substantial worldwide reputations of the complainants

in their trade marks.

The Respondent claims that the Complainant’s alleged trademarks are purely

descriptive and have not acquired any secondary meaning and are therefore incapable

of protection under Irish trade mark law. In particular, the Complainant has

failed to establish any secondary meaning in the initials <IIPMM>. Therefore

the Complainant has no recognized rights in the initials <IIPMM>. The

Respondent is not passing itself off as the Complainant in any way. When used

in the context of the Respondent’s international business, there is no likelihood

of confusion with the Complainant’s business and the Complainant has failed

to demonstrate any such confusion.

In response to the allegation that Respondent has no rights or legitimate interests

in respect of the domain name, the Respondent states that the Complainant is

predominantly an "offline" traditional organization involved in the

training and education of its members in Ireland. The Complainant has, since

1997, operated a web site located at<iipmm.ie>. In order to register a

".ie" domain name, the applicant must demonstrate a "real and

substantive connection with Ireland". The Complainant conducts all or almost

all of its business in Ireland and has no establishment outside of Ireland or

significant focus on business outside of Ireland. Its members are almost exclusively

either individuals located in Ireland or business with a presence in Ireland.

and Materials Management.

Until the Complainant became aware of the Respondent’s registration and use

of the name <iipmm.com>, the Complainant had taken no steps to secure

the domain names <iipmm.com>, <iipmm.net> or <iipmm.org> even

though these domain names were available until July 2000. The Respondent contends

that the failure of the Complainant to register these domain names indicates

that the Complainant had at no stage before the establishment of the Respondent’s

<International Institute for Purchasing and Materials Management> demonstrated

any interest in the said domain name <iipmm.com> or in promoting itself

outside of Ireland. This point is further evidenced by the fact that the Complainant

only registered <iipmm.org> after becoming aware of the Respondent’s ownership

of <iipmm.com>. The fact that <iipmm.org> remains dormant to this

day is a further indication that the Complainant has no interest in using the

domain name or in promoting itself outside of Ireland. Further, the Respondent

has not produced any evidence of confusion in Ireland or abroad between the

Complainant and the Respondent.

The Respondent argues that the Complainant cannot be allowed to use its domain

name in the ccTLD ".ie" as a grounds for creating a monopoly in all

gTLD’s. Using this rationale, any ".ie" domain holder could challenge

the legitimate use of an identical domain name using a gTLD even though no cybersquatting

is taking place. This approach if taken to its natural conclusion would produce

widespread unfair competition on the Internet in relation to descriptive and

initial-type domain names.

The Respondent therefore submits that the primary motivation of the Complainant

in issuing this Complaint is to stifle the development of the Respondent’s international

business.

The domain name was not registered or acquired primarily for the purpose of

selling, renting, or otherwise transferring the domain name registration to

the Complainant or to a competitor of the Complainant.

The domain name was not registered in order to prevent the Complainant from

reflecting the mark in a corresponding domain name and, in connection therewith,

the Respondent has not engaged in a pattern of such conduct. If the Respondent

wished to prevent the Complainant trading under domain names involving the initials

<iipmm>, the Respondent could easily have registered, for example, <iipmm.org>

or <iipmm.net> but it did not do so at that time. The Complainant already

uses the domain name <iipmm.ie> and has recently registered <iipmm.org>

(which remains dormant) and is therefore more than adequately covered in terms

of establishing a web presence. The Respondent’s position in relation to <ifpmm.com>

has been explained. The International Federation is a non-profit organization

which uses the domain names <ifpmm.co.at> and <ifpmm.org>. The International

Federation has not indicated any difficulty with the Respondent holding the

domain name <ifpmm.com> and the Respondent does not anticipate any such

difficulty. The Complainant’s reference to the <ifpmm.com> domain name

is not therefore relevant to this current dispute.

The Complainant quotes Tourplan (Case No. AF-0096) in support of its

allegation of bad faith. The Respondent submits that this case is not binding

on this Administrative Panel and argues that in any event Tourplan can

be distinguished as the former employee in that case had been dismissed by the

Complainant on bad terms and had established a web site in direct competition

with that of the complainant. The Respondent in the present administrative proceedings

left the Complainant’s employment several years ago on good terms and the Respondent

has not sought to establish a web site in competition with the Complainant.

The Respondent in his business using the <iipmm.com> domain name is not

a competitor of the Complainant and, by very definition, could never become

a competitor of the Complainant. To this end, the reference by the Complainant

to the cases of Tuxedo By Rose (NAF Case No. FA0007000095248), SGS

(WIPO Case No. D2000-0025) and Easyjet

(WIPO Case No. D2000-0024) are irrelevant

to the present case as they were decided on the basis of direct competition

and there was clear evidence of bad faith.

The Complainant’s contention that the Respondent is deliberately preventing

the Complainant from operating a web site incorporating one of its common law

marks is rejected. As shown above, the Complainant already has a web site located

at <iipmm.ie>. Since this dispute came to light, the Complainant subsequently

registered another domain name at <iipmm.org>. This latter domain name

remains dormant and does not even point Internet users to the ".ie"

site of the Complainant. The Respondent feels it is reasonable to presume that

the Complainant would take a similar approach to the domain name <iipmm.com>

if this Administrative Panel was to find in the Complainant’s favour in this

case.

The Complainant’s contention that the Respondent is seeking to mislead or cause

confusion among the existing and potential members and students of the Complainant

is also rejected. This allegation is given without any supporting evidence whatsoever.

Anyone visiting the Respondent’s web site would clearly know that the web site

is in no way connected with the Complainant. Existing members and students of

the Complainant are aware of the Complainant’s Internet address and there is

no confusion or association between the Complainant and the Respondent.

The Complainant makes a similarly unfounded claim that the Respondent is attempting

to disrupt the business of a competitor. No evidence is provided in this regard.

The Complainant and the Respondent are not competitors and the domain name was

not registered by the Respondent primarily to disrupt the Complainant’s business.

Indeed, the Respondent has even offered membership of its International Federation

to the Complainant to demonstrate this fact. The Respondent’s motivation for

registering the domain name is fully explained above. The domain name is not

and has not been used to compete with the Complainant. The domain name is being

used to fill a gap in the market for an international electronic medium for

players in the purchasing and materials management industry to exchange information

and share learning experiences. The Complainant does not compete in this area.

The Complainant has also failed to illustrate any bad faith on the part of

the Respondent in the use of the said domain name <iipmm.com>. The Respondent

had taken steps to develop significant content on the web site at the <iipmm.com>

address well before the Complainant indicated any difficulty with the domain

name. Before the Respondent received any notice of the dispute, there is evidence

of the Respondent’s demonstrable preparations to use the domain name in connection

with a bona fide offering of goods or services.

The actions of the Complainant in instituting these proceedings are an attempt

to stifle the development of a novel international business forum by an acknowledged

expert in purchasing and materials management.

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving

that:

i) the domain name in dispute is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights; and

ii) the Respondents have no rights or legitimate interests in respect of the

said domain name; and

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

The Complainant’s Rights

The domain name in issue in these proceedings is <iipmm.com> and in order

to succeed on the first limb of the test in paragraph 4 of the Policy, the Complainant

must establish that this domain name is identical or confusingly similar to

a trademark in which the Complainant has rights. The use of the letters <iipmm>

are in issue here and not the Complainant’s company name <Irish Institute

of Purchasing and Materials Management> nor the Respondent's business name

<International Institute for Purchasing and Materials Management>.

The Complainant uses the letters <iipmm> as part of its ".ie"

domain name and claims to have otherwise established a goodwill in the use of

these letters in association with its services. On the print-out of the Complainant’s

web site, submitted by the Complainant, the Complainant refers to itself throughout

as <IIPMM>. On the other hand, although the Complainant refers to itself

as <Irish Institute of Purchasing and Materials Management (IIPMM)> in

the Complaint. This is incorrect as the copy of the Short Certificate of Incorporation

of a Company submitted in the Complaint clearly states that the Complainant's

corporate name is in fact <Irish Institute of Purchasing and Materials Management>.

The letters <IIPMM> do not appear in its registered company name.

The Respondent has submitted that the Complainant has not registered <IIPMM>

as a business name or as a trademark and does not normally trade under the name

<IIPMM> unless additional and accompanying reference is made to its full

title <Irish Institute of Purchasing and Materials Management>. Other

than this use as a domain name and the statements on the web site referring

to itself as <IIPMM> the Complainant has provided no evidence of use of

the initials <IIPMM> without accompanying reference to the full name of

the Complainant. The Respondent contends that the use of the initials <IIPMM>

would be meaningless to the general public and to international players in the

purchasing and materials management industry in the absence of accompanying

reference to the full name of the Complainant.

The issue of whether the trademark and service mark <Irish Institute of

Purchasing and Materials Management> is generic and/or unregistrable is not

relevant to these Administrative Proceedings as these proceedings are only concerned

with the domain name <iipmm.com>. The letters <iipmm> do not make

a word and have no meaning and therefore by definition are not descriptive.

The decisions of the learned panelists in E.I. du Pont de Nemours and Company

v. Avant Garde Composition (WIPO Case

No. D2000-0130) and In CRS Technology Corporation –v- Condenet, Inc.,

(NAF Case No. FA0002000093547) are not relevant here.

It would have been preferable to have had more evidence of use of the letters

<IIPMM> by the Complainant to distinguish its goods and services. This

Administrative Panel considered if there was sufficient evidence of such use.

On balance this Administrative Panel accepts that the Complainant has established

that it has acquired common law rights in the use of the letters <IIPMM>

as an unregistered trademark and service mark in association with its business

on the Internet and otherwise as claimed by the Complainant. The Complainant

clearly uses the letters <IIPMM> as its domain name <iipmm.ie> and

continually refers to itself as the <IIPMM> on the web site at that address.

Furthermore, the Respondent has acknowledged such other use, albeit with the

reservation that such other use has been in association with the words <Irish

Institute of Purchasing and Materials Management>.

Identical or Confusingly Similar

The domain name at issue <iipmm.com> is clearly identical to the said

unregistered trademark and service mark <IIPMM> in which the Complainant

has rights.

The Respondent’s Rights or Legitimate Interests in the Domain Name

As regards the Respondent’s rights or legitimate interest in the said domain

name, this Administrative Panel is satisfied that the Respondent was aware that

the Complainant had used the designation <IIPMM> to distinguish its services.

Furthermore, while the Respondent argues that he is not interested in the same

market as the Complainant, it is clear to this Administrative Panel that while

the Respondent may be interested in a wider international market, this would

at some level overlap with the domestic Irish market in these services. This

overlap would bring the Respondent into conflict with the Complainant’s common

law rights in the use of the letters <IIPMM> to distinguish its services

in Ireland.

Furthermore, despite the argument by the Respondent that the Complainant's

activities are based in the domestic market, the Complainant has submitted that

it has an international membership and both parties are agreed that the Complainant

is a member of the International Federation.

It is also significant that the Respondent did not register the said domain

name until July 4, 2000, whereas the Complainant had an established web site

at <iipmm.ie> since 1997.

This Administrative Panel has considered the circumstances set out in the Policy

whereby a Respondent can establish such rights and legitimate interest in the

said domain name and although the Respondent has furnished a detailed Response

in these Administrative Proceedings he has not gone any way to answer the prima

facie case made by the Complainant. The Respondent has not shown that he

has used or made any demonstrable preparations to use the said domain name or

a name corresponding to the said domain name in connection with a bona fide

offering of goods or services before any notice to the Respondent of the dispute.

The Respondent has furnished a letter from a firm of consultants to the effect

that the Respondent had entered into discussions during July and August 2000,

regarding the establishment of a web site at the Respondents <iipmm.com>

domain address. The Respondent has also provided a memorandum dated September

4, 2000, from a consultant giving the Respondent permission to use material

from a magazine entitled Professional Purchasing. Nontheless, this Administrative

Panel is not satisfied that such use could be bona fide insofar as the

choice of the said domain name <iipmm.com> and the use of said domain

name as an address for a web site would inevitably result in confusion with

the Complainant's unregistered trademark and service mark <IIPMM> and

the Complainant's pre-existing web site at <iipmm.ie>.

Neither has the Respondent shown that he (as an individual, business, or other

organization) has been commonly known by the said domain name, even if the Respondent

has acquired no trademark or service mark rights. On the contrary it is clear

that the Complainant has been using this designation for a number of years and

has established common law rights in the said designation. Furthermore, there

is no question that the Respondent is 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, because the

Respondent is clearly engaged in commercial activity.

Furthermore, the Respondent did not register the letters <IIPMM> as a

Registered Business Name until October 24, 2000, the day on which the Respondent

received a letter from the Complainant advising him of the Complainant’s intention

to commence these Administrative Proceedings.

It follows that the Respondent has no rights or legitimate interest in the

said domain name.

Registered and Being Used in Bad Faith

As regards the question of whether the said domain name was registered and

is being used in bad faith, this Administrative Panel is satisfied that the

Respondent chose a domain name which he knew was identical to a service mark

in which the Complainant had rights at common law. He is a former employee and

National Council member of the Complainant. The Complainant has not entered

into any licensing arrangement or joint venture with the Respondent in relation

to any aspect of the Respondent’s business including the registration of Internet

domain names.

When choosing said domain name the Respondent nonetheless chose to register

a domain name which he must have been aware was likely to cause confusion in

the Irish marketplace. If the Respondent was genuinely interested in building

an institute as he claims to be, it would surely be in his own interest as well

as in the interest of the Complainant that such confusion be avoided. It is

noteworthy that the Respondent has set out in his submissions that he considered

a number of alternatives before deciding on the said domain name.

Furthermore, the Complainant has established that the said domain name links

to the Respondents APS web site. It is accepted by both parties that the Respondent

carries on a commercial business trading as the <Association for Purchasing

and Supply> or <APS>. The Respondent claims to have carried on business

under these names since 1998 and that he has a customer base of more than 200

members. This Administrative Panel therefore accepts that this linking is likely

to divert customers of the Complainant to the Respondent’s site. It was not

until after October 24, 2000, the date on which the Respondent was advised of

the Complainant’s intention to initiate these Administrative Proceedings that

the Respondent amended the content of his web site to promote his <International

Institute for Purchasing and Materials Management> project. He nonetheless

chose to register a domain name <iipmm.com> identical to the unregistered

trademark and service mark and this was done in the knowledge that his former

employer, an organization on which the Respondent had been a National Council

member, had registered and was using the ccTLD domain name <iipmm.ie>

as its web address since 1997.

This Administrative Panel is also conscious that the Respondent is presenting

APS and the project <International Institute for Purchasing and Materials

Management> as though they are separate entities. These are merely business

names of the Respondent and his claims that APS provided funding for the <International

Institute for Purchasing and Materials Management> project is difficult to

understand, since they are each merely trading names for his own businesses.

This Administrative Panel is not concerned with the Respondent’s registration

of the domain name <ifpmm.com>.

In the view of this Administrative Panel the Complainant has satisfied the

third limb of the test in paragraph 4 of the Policy. In reaching this conclusion,

this Administrative Panel notes that the Respondent is a former employee of

the Complainant and the circumstances in this case are to some extent similar

to those prevailing in Tourplan (e-Resolution Case DeC AF-0096) and

ESAT Digifone Limited v. Michael Fitzgerald Trading as Telco-Resources (WIPO

Case No. D2000-0602).

7. Decision

With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules

this Administrative Panel decides that the domain name <iipmm.com> is

confusingly similar to a trademark and service mark in which the Complainant

has rights, that the Respondent has no rights or legitimate interest in respect

of said domain name and that the Respondent has registered and is using said

domain name in bad faith. Accordingly, this Administrative Panel decides that

said domain name <iipmm.com> should be transferred to the Complainant.

James Bridgeman

Sole Panelist

Dated: May 30, 2001