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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hexagon Metrology AB, and Hexagon Metrology, Inc. v. The Morgan Company / H.Morgan

Case No. D2009-1319

1. The Parties

Complainants are Hexagon Metrology AB of Sweden and Hexagon Metrology, Inc of United States of America represented by internally.

Respondent is The Morgan Company / H.Morgan of California, United States of America represented by Steven D. Rubin of United States of America.

2. The Domain Names and Registrar

The disputed domain names <brownandsharp.com>, <brownandsharp.info>, <brownandsharp.net>, <brownandsharp.org>, <chbnsmc.com>, <usbnsmc.com> and <usromer.com> are registered with MyDomain, Inc. d/b/a NamesDirect.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2009. On October 7, 2009, the Center transmitted by email to MyDomain, Inc. d/b/a NamesDirect a request for registrar verification in connection with the disputed domain names. On October 7, 2009, MyDomain, Inc. d/b/a NamesDirect transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 9, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 2, 2009. The Response was filed with the Center on October 30, 2009.

The Center appointed Mark Partridge as the sole panelist in this matter on November 10, 2009. 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.

The Panel subsequently found it necessary to extend the due date for this decision.

4. Factual Background

Complainant (used collectively herein to refer to the named complainants and their affiliates) produces coordinated measuring machines, known as CMMs, and provides related services. Complainant markets its products under the names Brown & Sharpe and Romer.

Complainant has obtained registrations for the marks BROWN AND SHARPE and ROMER in the United States and elsewhere.

Respondent sells used equipment manufactured by Complainant and others. Respondent was a representative of Complainant`s products and services from 2000 to 2006. Respondent`s contract stated that he was not allowed to represent himself as "the Brown & Sharpe Distributor."

Respondent acquired the domain name <brownandsharp.com> from a third party in 2002. Complainant inquired about the domain name in 2003 and Respondent offered to transfer the domain name for the purchase price and additional expenses. Complainant refused and demanded that Respondent not use the domain name. It appears that Respondent then ceased active use of the domain name and instead posted a statement that the "Brownandsharpe.com Site Down For Maintenance." (Note the added "e" incorrectly referring to Complainant`s legitimate site).

Respondent continued to represent Complainant until 2006. The parties continued to discuss ongoing contracts until the filing of this proceeding.

The disputed domain names were registered by Respondent after Complainant established rights in and registered the marks BROWN AND SHARPE and ROMER.

Respondent currently operates as a competitor of Complainant.

5. Parties` Contentions

A. Complainant

Complainant contends that the domain names <brownandsharp.com>, <brownandsharp.info>, <brownandsharp.net>, and <brownandsharp.org> are confusingly similar to its BROWN AND SHARPE mark.

Complainant contends that the domain name <usromer.com> is confusingly similar to its mark ROMER.

Complainant contends that the domain names <usbnsmc.com> and <chbnsmc.com> are confusingly similar to email addresses "formerly" used by Complainant.

Complainant further contends that Respondent has no rights or legitimate interests in the domain names and that the domain names were registered and used in bad faith to disrupt Complainant`s business.

B. Respondent

Respondent admits that the domain names are similar to Complainant`s marks.

Respondent says that the disputed domain name <brownandsharp.com> was acquired in October 2002, while Respondent was representing Complainant`s products and services. Respondent operated under a contract with Complainant to generate sales leads. Complainant inquired about the domain name in 2003. Respondent said the domain name was used to generate leads for Complainant. Respondent says it offered to transfer the domain name for simple reimbursement of its expenses, which includes USD1500 for purchasing the domain name from a third party. Respondent says Complainant rejected this offer and instead threatened legal action. Nevertheless, Respondent claims Complainant "explicitly" implied consent to ownership and use of the domain name. Respondent argues that Complainant`s claims are barred by laches due to 6 1/2 years of delay in taking action.

Respondent contends it acted in good faith in acquiring the domain name because it used the name to generate leads for Complainant.

Respondent claims this proceeding was brought in bad faith because Respondent did not re-enter Complainant`s sales lead program.

Respondent has not addressed registration and use of the remaining domain names.

6. Discussion and Findings

The parties have made voluminous filings in this case relating to their complicated ongoing relationship and have responded to the Panel`s request for further information. Based on those submissions, the Panel makes the following findings.

A. Identical or Confusingly Similar

Complainant has demonstrated rights in the marks BROWN AND SHARPE and ROMER. The disputed variations of "brownandsharp" and domain name <usromer.com> are confusingly similar to trademarks owned by Complainant. The only differences are omission of the "e" from "Sharpe" and the additions of "us" to "Romer". Neither is sufficient to avoid confusion.

Complainant has not claimed or demonstrated trademark rights in "chbnsmc" or "usbnsmc", but merely claims that such designations are confusingly similar to email addresses formerly used by Complainant. Complainant has the burden of proving that the disputed domain names are identical or confusingly similar to marks in which Complainant has rights. It has not met that burden here, so its claims with respect to <chbnsmc.com> and <usbnsmc.com> are denied.

The rest of this decision relates to the disputed names containing "brownandsharp" and "romer".

B. Rights or Legitimate Interests

Complainant must show that Respondent lacks any right or legitimate interest in the domain name. Although Respondent was an authorized distributor of Complainant`s products, Respondent admits that relationship ended in 2006. Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the remaining domain names at the time of the Complaint.

C. Registered and Used in Bad Faith

(i) <brownandsharp.com>

As noted above, the domain name <brownandsharp.com> was acquired by Respondent at a time when he was a distributor for Complainant. In some instances, panels have found that a contractual relationship between the parties will support a finding of good faith registration of the domain name. See generally the cases cited and discussed in Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution, WIPO Case No. D2004-0426.

For instance, in Celebrity Signatures International, Inc. v. Hera`s Incorporated Iris Linder, WIPO Case No. D2002-0936, the panel explained the difficulty of finding a violation of the Policy when there is no specific prohibition on a dealer`s registration of domain names incorporating the mark of the products it is allowed to sell:

"Complainant is correct in noting that a distributor`s use of a manufacturer`s mark as a domain name may constitute an infringement of trademark rights. However, such use may be permissible if there is license or consent. Here, Respondent was not prohibited by contract from using the Complainant`s mark as her domain names, and in fact it appears that Complainant`s representatives encouraged such use on at least two occasions....

"Applying those principles here, I recognize without deciding the issue the possibility that Respondent`s current use after objection might be an infringement of Complainant`s rights and that Respondent may no longer be justified in believing its use is permitted after receiving Complainant`s objections. Nevertheless, that possibility involves a dispute that is beyond the scope of this proceeding. Here, the Policy requires proof of bad faith registration and use. Based on the record presented, I find at the time of registration that Complainant had no distribution agreement or policy in place to prevent Respondent from registering and using the domain name. Further, Complainant`s representatives appear to have known of Respondent`s conduct and encouraged her in her use. She intended to use the domain name for a website selling Complainant`s products, she was encouraged to do so by Complainant`s representatives, she did so for over a year without objection. These facts have not been rebutted by Complainant. It does not appear that she did so with the intent to be a cybersquatter or to unfairly trade on Complainant`s good will. To a significant degree, Complainant`s own actions created the circumstances in which Respondent could reasonably conclude that her conduct was permitted. Thus, I conclude within the circumstances of this record that Complainant has not met its burden of proving that Respondent registered the domain name in bad faith."

Similarly, Urbani Tartufi s.n.c. v. Rosario`s Epicureo Ltd., WIPO Case No. D2003-0081, states:

"Registration of the disputed Domain Name was done with the evident consent of Complainant at a time when Complainant and Respondent were in a business relationship. . . . there has to be both registration of the Domain Name in bad faith and use in bad faith, and whilst Complainant may now want to make complaints about the recent use of the website, for reasons stated previously there is no evidence its registration was made in bad faith. Complainant has failed to prove that the Domain Name was registered and used in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy."

Nevertheless, Celebrity Signatures International, Inc. v. Hera`s Incorporated Iris Linder, WIPO Case No. D2002-0936, notes that bad faith has been found with respect to former distributors and dealers if there is no reasonable basis for inferring consent:

"A variety of cases under the Policy deal with use of marks as domain names for sites operated by dealers. In some instances, the Panel has found a violation of the Policy. For example, this Panel found a violation of the Policy in Herbalife International of America, Inc. v. myherbalife.com, WIPO Case No. D2002-0101 (April 13, 2002). In that case, the respondent`s use was contrary to the Complainant`s published guidelines for independent distributors. The decision states:

"Respondent lacks any rights or legitimate interest in the Domain Name. It is not authorized or licensed to use Complainant`s mark as a domain name. In fact, Complainant`s Internet Guidelines for independent distributors prohibit such use. . . I also find that Respondent registered and used the Domain Name in bad faith. Registration of the Domain Name was contrary to Respondent`s obligations as an independent distributor of Complainant`s products. . . . Bad faith registration is shown here by the registration of a domain name in contravention of an undisputed agreement between the parties."

The cases above that deny relief rely on consent of the Complainant by agreement or action to the disputed domain name registration and use. Contrary to Respondent`s vigorous assertions, such consent is not present here, as shown by several circumstances:

- When Respondent became a distributor, Respondent`s contract stated that he was not allowed to represent himself as "the Brown & Sharpe Distributor." This does not "explicitly" imply that he could register various forms of the company name as his own domain name. Quite the contrary. It implies that unauthorized use of the company name or references to the relationship are not permitted. At the very least, this raises doubt that could have been resolved by requesting permission, which was not done.

- Respondent acquired a misspelling of the company name, rather than a legitimate variation. If he believed he were acting in good faith, one would expect him to seek a legitimate variation of the name. It is more likely than not that Respondent knew or should have known that Complainant would not consent to use of that improper version of its name.

- Promptly after learning about the domain name, Complainant objected and demanded that he cease use. It is understandable that Complainant was not interested in obtaining the misspelling of its name, but instead demanded that use cease. It appears that Respondent did discontinue active use of the name at that time.

Based on the record presented, the Panel cannot conclude that the domain name <brownandsharp.com> was registered in good faith. Rather, it appears the domain name was acquired by Respondent in bad faith in 2002 for the purpose of obtaining commercial gain based on confusion with Complainant`s mark, and was not authorized or consented to by Complainant. Even if Respondent thought at the time that he was permitted to obtain domain names containing Complainant`s brands to promote Complainant`s business, it would not be reasonable for him to obtain a misspelling of Complainant`s name for that purpose. In cases where a contractual relationship implies consent to registration and use of domain names, such consent would not extend to "typos" that might compromise and damage the brand. Respondent knew or should have known that such a name would not be permitted.

Further indication that the domain name has been used in bad faith to disrupt the business of a competitor is the fact that the associated web site contained a statement referring to Complainant`s legitimate domain name and stating that the site was "Down For Maintenance." Internet users who mistakenly omit the "e" while in search of Complainant`s site are likely to be hindered or deterred from doing business online with Complainant. We can find no good faith justification for this false, misleading and potentially disruptive statement.

Other evidence of bad faith use includes the fact that Respondent has engaged in a pattern of registering domain names that refer to Complainant. It has provided no explanation or defense for this conduct.

Accordingly, the Panel finds that the disputed domain name <brownandsharp.com> has been registered and used in bad faith in violation of the Policy.

Respondent argues that Complainant`s delay in taking action against this domain name is evidence of consent and is a basis for denying relief. The Panel disagrees. Complainant promptly told Respondent to cease use of the name, so there is no basis for implying consent. Furthermore, UDRP panels have generally found that the defense of laches based on unreasonable delay does not apply in UDRP actions, as Respondent recognizes. Moreover, the equitable defense of laches is based on reasonable reliance. In this case, it was not reasonable for Respondent to conclude that Complainant consented to its conduct. Complainant demanded that Respondent stop use and Respondent appeared to comply. The dispute arose again when Complainant learned about Respondent`s pattern of abusive registrations. At that time it took action.

(ii) <brownandsharp.net>, <brownandsharp.info>, <brownandsharp.org> and <usromer.com>

It appears that the remaining domain names were registered and used as part of a pattern of abuse to disrupt Complainant`s business. Again, Respondent has provided no explanation or defense relating to these domain names, despite extensive submissions relating to <brownandsharp.com>. Accordingly, the Panel find that these domain names were also registered and used in bad faith in violation of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <brownandsharp.com>, <brownandsharp.info>, <brownandsharp.net>, <brownandsharp.org> and <usromer.com> be transferred to Complainant.

The claim for relief with respect to <chbnsmc.com> and <usbnsmc.com> is denied.

Mark Partridge
Sole Panelist

Dated: January 6, 2010