Convertech, Inc. v. The Maphx Company DBA Laserlitho, Inc

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Convertech, Inc. v. The Maphx Company DBA Laserlitho, Inc

Case No. D2003-0886

1. The Parties

The Complainant is Convertech, Inc., Wharton, New Jersey, United States of

America represented by Jon Anderson of Radix Media.

The Respondent is The Maphx Company DBA Laserlitho, Inc, Wharton, New Jersey,

United States of America .

2. The Domain Name and Registrar

The disputed domain name, <convertechinc.com>, is registered with Network

Solutions, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

"Center") on November 5, 2003. On November 6, 2003,

the Center transmitted by email to Network Solutions, Inc. a request for registrar

verification in connection with the disputed domain name. On November 12, 2003,

the Registrar Network Solutions, Inc. 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 this proceeding began on December 1, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

December 21, 2003. The Response was filed with the Center on December 19, 2003.

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

January 5, 2004. The Panel finds that it was properly constituted.

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

The disputed domain name, <convertechinc.com>, was registered on February 22, 1999.

The Complainant applied for a United States federal trademark for the term

"convertech" in January, 2003, but, thus far, the Complainant

has not succeeded in obtaining this proposed trademark’s registration.

5. Parties’ Contentions

A. Complainant

- The registered domain name, <convertechinc.com>, is confusingly similar

to the Complainant’s business name, Convertech Inc. A true and correct copy

of the United States Patent and Trademark Office record that applies to the

trademark name in question is provided as Annex 3 to this Complaint.

- The disputed domain name, <convertechinc.com>, contains the trademark

and full business name of the Complainant.

- There is no evidence of the Respondent’s 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.

- There is no evidence the Respondent has been commonly known by the domain

name, and the Respondent has not acquired the trademark or service mark rights.

- There is no evidence the Respondent is making a legitimate non-commercial

or fair use of the disputed domain name.

- There are circumstances demonstrating that the domain name was registered

or acquired primarily for the purpose of selling it to the owner of the trademark

(Convertech, Inc.) for valuable consideration in excess of the Respondent’s

out-of-pocket costs directly related to the domain name. A true and correct

copy of the email correspondence with the Respondent showing his intent for

commercial gain from the Complainant is provided as Annex 4 to this Complaint.

- There are circumstances demonstrating the domain name was registered primarily

for the purpose of disrupting the business of the Complainant.

- The disputed domain name should be transferred to the Complainant.

B. Respondent

- Complainant most often refers to itself as Convertech, not Convertech, Inc.,

see Annex IR—literature of Complainant. As such, the domain name, <convertech.com>,

was purchased by the Complainant in February of 2003. This purchase caused the

Complainant to cancel its agreement to purchase from the Respondent the domain

name in issue for the valuable consideration of $8,000 from the Respondent (see

Annex 2R). This clearly demonstrates the Complainant’s knowledge and agreement

of the value of the disputed domain name to the Respondent.

- Annex 3R as submitted by the Complainant (Annex 3) clearly demonstrates that

the Complainant does not hold a registered trademark. This document clearly

states under current status "…examining attorney is requesting additional

information and/or making an initial refusal. However, no final determination

as to registrability of the mark has been made." This application was only

made in January of 2003, and the report is in August of 2003. The Complainant

has clearly misrepresented this fact.

- Respondent registered the disputed domain name in October of 1999. We put

<convertechinc.com> in use at that time and continued to use the same

up to February of 2003. Respondent enjoys the benefit of marketing its services

very successfully for 10 years to many companies that are in the converting

market. When Complainant decided not to purchase the disputed domain name from

the Respondent (see Annex 3 R) in February of 2003, Respondent resumed its plan

to use this for its marketing purposes for products, services and for companies

unrelated to the Complainant.

- Complainant by its own admission manufactures core holders and shafts that

are used as part of equipment manufactured by others. Complainant’s market is

very small and narrow compared to Respondent’s and totally unrelated.

- Again in response to the Complainant’s allegations, the Complainant has only

supplied this Panel with partial information. They did not supply this Panel

the agreement (see Annex 2R) between the parties of this proceeding. This agreement

was prepared by the Complainant and submitted to the Respondent for the purchase

of this domain name. See Annex 2R. Instead of completing that transaction, the

Complainant chose to purchase a domain name that clearly resembles the way they

have marketed their company over the years.

- In addition, Annex 5R is a small sample of how the word Convertech is used

commercially in many markets throughout the USA and the world. Please note the

trade publication from Japan that is worldwide in circulation called Convertech.

While reviewing this Annex 5R, you will notice how commercially common this

name is and certainly not unique to the Complainant.

- The Complaint should be denied.

- In addition, the Panel should find the Complainant has attempted through

the misuse of this Policy and Panel to accomplish reverse domain name hijacking.

As a result, this Panel can make a cost order in favor of the Respondent.

6. Discussion and Findings

In order for the Complainant to prevail and have the disputed domain name,

<convertechinc.com>, transferred to it, the Complainant must prove the

following (the Policy, paragraph 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service

mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain

name; and

- the domain name was registered and is being used in bad faith

A. Identical or Confusingly Similar

At its Annex 3, the Complainant has exhibited a response dated August 1, 2003,

from the United States Trademark Office about the Complainant’s January 31, 2003,

application for a trademark for the word "convertech". The response

informs the Complainant that more information is needed and that in the meantime

the Complainant’s request to register "convertech" as a trademark

can not be granted. In the Panel’s view, this shows that the Complainant does

not yet possess the trademark rights that would obtain if it had a registered

United States trademark for "convertech". In First Tuesday Limited

v. The Startup Generator and Christopher Stammer, WIPO Case

No. D2000-1732 (February 12, 2000), the panel stated: "…neither

the United States application nor the Community trademark application, nor specific

applications in particular countries provide evidence in and of themselves of

trademark rights…."

The Complainant also contends that the disputed domain name, <convertechinc.com>,

contains the "full business name of the Complainant." However, it

is well settled under the Policy that company names or trade names are not protected

under the Policy unless they are also used as a trade or service mark (see e.g.

Frank Wagner & Son v. Cindy Mahan a/k/a Cindy Maham, an individual,

WIPO Case No. D2000-0261, (June 14, 2000).

The Complainant has not attempted to demonstrate it has used the term "convertech"

as a trade or service mark.

The Panel thus concludes that the Complainant has failed to carry its burden

of proof under the Policy at paragraph 4(a)(i). Since the Policy requires the

Complainant to prevail under paragraphs 4(a)(i-iii) inclusively, the Panel does

not need to reach the issues of rights or legitimate interests or of bad faith.

Reverse Domain Name Hijacking

The Respondent has requested that the Panel find the Complainant has brought

the Complaint in bad faith per paragraph 15(e) of the Rules. However, the Panel

believes the Complainant was not in bad faith but rather slightly misunderstood

the Policy and the Rules.

As to the Respondent’s request that the Panel award costs to the Respondent,

the Panel knows of no basis for this request in the Policy or the Rules.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dennis A. Foster

Sole Panelist

Date: January 19, 2004