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WIPO Arbitration and Mediation Center

The Parties

Complainant is Adaptive Molecular Technologies, Inc., a corporation organized under the laws of the Commonwealth of Virginia, U.S.A., with a principal place of business at 1285 Baring Boulevard, Sparks, Nevada, United States of America. Respondent is Priscilla Woodward and Charles R. Thorton, two individuals, doing business as Machines & More, with a principal place of business at 204 East Main Street, Woodbury, Tennessee, United States of America. Complainant is represented by counsel in this matter (Pepper Hamilton LLP of Washington, D.C., United States of America); Respondent appears pro per.

Domain Name and Registrar

The domain name at issue is "militec.com". The registrar is Network Solutions, Inc.("NSI"), based in the United States of America.

Procedural History

On January 14, 2000, Complainant submitted a Complaint to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") pursuant to paragraph 3 of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). Complainant submitted the required fee. The WIPO Center received the Complaint on January 17, 2000, acknowledging receipt on January 22, 2000. On January 24, 2000, Complainant submitted an Amended Complaint to the WIPO Center.

On January 25, 2000, the WIPO Center sent Respondent a Notification of Complaint and Commencement of Administrative Proceeding. On February 10, 2000, Respondent submitted a Response and an Amended Response to the WIPO Center, and the WIPO Center acknowledged receipt of both submissions.

On January 21, 2000, NSI confirmed that militec.com is registered with NSI and that Machines & More is the current registrant.

Factual Background

Complainant has provided evidence of its ownership of the following marks:

1. MILITEC (& design), Registration No. 1,589,547, registered with the United States Patent and Trademark Office for a term of 10 years from April 3, 1999, claiming a date of first use in 1988, for "chemical based metal conditioning fluid for use on metal and alloy products to reduce friction and corrosion for use in engines, transmissions, gear boxes, pumps, military and sporting weapons, ammunition, and the like in Class 1"; and "lubricants used in engines, transmissions, gear boxes, pumps, military and sporting weapons, ammunition, and the like, in Class 4." The mark depicts the word MILITEC in bold letters, with a series of three circles and adjoining lines, located both above and below the word.

2. MILTEC-1, Registration No. 1,597,015, registered with the United States Patent and Trademark Office for a term of 10 years from May 22, 1990, claiming a date of first use in 1988, for "chemical based metal conditioning fluid for use on metal and alloy products to reduce friction and corrosion for use in engines, transmissions, gear boxes, pumps, military and sporting weapons, ammunition, and the like in Class 1"; and "lubricants used in engines, transmissions, gear boxes, pumps, military and sporting weapons, ammunition, and the like, in Class 4."

Amended Complaint, Exhibits A and B. Complainant also claims registered trademark rights in the trademark MILITEC-1 in many countries around the world. Amended Complaint, Paragraph 11.

Respondent does not dispute Complainant’s ownership of the above trademarks.

Complainant alleges that because of its use of its MILITEC (& design) and MILITEC-1 since 1988 "MILITEC is associated exclusively with Complainant." Amended Complaint, Paragraph 9. Complainant also alleges that "Complainant’s MILITEC trademark is "very well known, if not famous, to the relevant purchasing public" and is "an important part" of Complainant’s business. Amended Complaint, Paragraph 10.

Respondent claims to have begun selling bottles of Complainant’s MILITEC-1 metal conditioner in Respondent’s retail store in March 1999. Amended Response, Paragraph 1. Respondent initially purchased the product through what appears to be a third party distributor, Advanced Product Distributors. Amended Response, Paragraph 1 and Exhibit A. Respondent alleges that it subsequently arranged with Complainant’s sales manager, "Russ", to become a "stocking distributor" of MILITEC-1, and began to order directly from Complainant. Amended Complaint, Paragraph 2 and Exhibit B (copies of a purchase order, invoice and cancelled check for US$2425.00 purchase).

Complainant apparently operates a website at "militec-1.com". See Amended Complaint, Paragraph 4. According to Respondent, when Respondent obtained the domain militec.com, with knowledge that Complainant operated an informational site at militec-1.com, Respondent "promptly informed" Complainant’s sales manager that Respondent had obtained the domain. Amended Complaint, Paragraph 6. Respondent alleges that Complainant’s sales manager’s response to this news was "positive". Amended Complaint, Paragraph 6. Respondent alleges that at some subsequent point, Complainant, via facsimile, contacted all of its distributors advertising Militec-1 on line, including Respondent, requesting that such online sales cease. Amended Response, Paragraph 6.

It is undisputed that Respondent retails Complainant’s MILITEC-1 product on the website at militec.com. Amended Complaint, Exhibit C; Amended Response, Paragraphs 6 and 7. According to Respondent, it sells nothing else on the site. Amended Complaint, Paragraph 12. The evidence shows that the only content on the site is a promotion for MILITEC-1. Amended Complaint, Exhibit C. The home page prominently depicts what appears to be a bottle of MILITEC-1, bearing both the MILITEC (& design) and MILITEC-1 trademarks, between a photograph of a racecar and a photograph of a car racing scene, under a banner reading "Welcome to MILITEC.COM". Amended Complaint, Exhibit C. Under the photographs headlines read: "It’s AN INSIDE JOB!! MILITEC is The Greatest Inside Job You Will Ever Do on an [sic] NOTHING Beats an Inside Job! Amended Complaint, Exhibit C. Following more promotional text, there is an "800" number to request information, under which the following appears in large print: "This Site is Owned & Operated by Machines & More", and under that, "Official Militec-1 Supplier". Amended Complaint, Exhibit C. According to Respondent, it added the latter language, after Complainant complained that Respondent was representing itself on the site as the manufacturer. Amended Response, Paragraph 9. Respondent claims to refer all inquiries generated on the site concerning overseas sales or distributorship possibilities to Complainant. Amended Response, Paragraph 10.

The parties agree that, via facsimile, Complainant asked Respondent to cease and desist from use of the domain name and that Respondent has not complied. Amended Complaint, Paragraph 15; Amended Response, Paragraph 7. Respondent further alleges that it has received telephone calls from Complainant and from counsel for Complainant, respectively, accusing Respondent of "cybersquatting" and threatening legal action. Amended Response, Paragraph 7. Respondent apparently countered that it was a "lawful distributor" of MILITEC-1. Amended Response, Paragraph 7. Respondent believes that it remains a "stocking distributor" of Militec-1. Amended Response, Paragraph 9.

The Amended Complaint is silent as to any existing or past relationship between the parties (as was the Complaint).

Discussion and Finding

Our jurisdiction is limited. Pursuant to Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the Policy), a domain can be transferred only where the complainant has proven that each of the following three elements is present:

1) The domain is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

2) The domain holder has no "rights or legitimate interests in respect of the domain name"; and

3) The domain "has been registered and is being used in bad faith."

5.1 Confusing Similarity

It is beyond dispute that Complainant has satisfied the first requirement. While the domain "militec" is not identical to Complainant’s MILITEC (& Design) and MILITEC-1 trademarks, as Complainant would have this panel believe (Amended Complaint, Paragraph 13), it undoubtedly is confusingly similar, in that it is the primary, distinctive element of both of Complainant’s trademarks. Moreover, Respondent does not dispute Complainant’s trademark rights, and refers to Complainant’s product by the shorthand "MILITEC" on the web site. Amended Complaint, Exhibit C.

5.2 Rights in Domain Name

While Complainant satisfies the first requirement, the same cannot be said of the second and third requirements of Paragraph 4(a). As to both, significant factual issues remain, resolution of which are beyond the scope of the panel’s jurisdiction. According to Respondent, it is an authorized "stocking distributor" of Complainant’s MILITEC-1 product. In that capacity, it put up a web site for the sole purpose of promoting the MILITEC-1 product, choosing a domain name that, to the informed consuming public, would clearly identify the site with the product -- militec.com. Respondent claims to have immediately told Complainant’s sales manager what it was doing, and the news purportedly was greeted well. There is no suggestion that the product sold on the militec.com web site is not genuine product or that it has been repackaged or otherwise modified in any way.

Under these circumstances and on this record, it cannot be concluded that Respondent has no "rights or legitimate interests" in the domain as is required under the Policy. While Respondent does not own MILITEC as a trademark, questions remain as to whether Complainant legally acquiesced in Respondent’s registration and use of the domain, at least initially, or whether Respondent’s use is a nominative fair use. Acquiescence and fair use are principles of trademark law, each requiring full analysis of the underlying facts. These are issues for the courts.

5.3 Bad Faith

Likewise, Complainant cannot, on this record, establish the requisite bad faith. While it is undisputed that Respondent chose the domain name militec.com with knowledge of Complainant’s trademark rights in MILITEC (& design) and MILITEC-1, that mere knowledge, alone, does not, at least in the circumstances presented here, establish bad faith in registration of the domain name.

Complainant alleges that it has established bad faith as defined in Paragraph 4(b)(iv) of the Policy, which provides that the following is evidence of registration and use "in bad faith":

"by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

Complainant alleges, on information and belief, that Respondent’s "use of Complainant’s trademark is intended to and does confuse the relevant purchasing public into believing that Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with Respondent’s web site at ‘militec.com’ (Amended Complaint, Paragraph 14), and that Respondent has acted "with the intent and purpose of creating likelihood of confusion and appropriating and trading upon Complainant’s considerable goodwill and reputation" (Amended Complaint, Paragraph 16). Complainant bases these allegations on the fact that Respondent selected the domain name knowing of Respondent’s trademark rights (Amended Complaint, Paragraph 16), the fact that the web site "falsely proclaims" that Respondent is an "Official Militec-1 Supplier" (Amended Complaint, Paragraph 12), and the fact that Respondent has failed to cease and desist from use of the domain name (Amended Complaint, Paragraph 15).

The record does not support a finding of bad faith. While we do not, and cannot know the full extent of the relationship between the parties, it does appear that there is, or was, some relationship between the two involving Respondent’s sale of Complainant’s product. Complainant has chosen not to comment on that relationship. Respondent produced evidence of sales of MILITEC-1 from Complainant (or its agent) directly to Respondent. Amended Response, Paragraphs 1, 3 and Exhibits A and B. Respondent considers itself to be a "stocking distributor" of Complainant’s, and on that basis apparently believes that the statement "Official Militec-1 Supplier" on its web site is true. Amended Response, Paragraphs 2 and 9. Respondent alleges that Complainant’s sales manager reacted positively when Respondent told him it had obtained the militec.com domain name. Amended Response, Paragraph 6. The web site is devoted entirely to the sale of Complainant’s product. Amended Complaint, Exhibit C; Amended Response, Paragraphs 7 and 13. There is no allegation that the product is not genuine.

If Respondent, in fact, is one of Complainant’s "stocking distributors", it may reasonably believe that the statement on the web site, "Official Militec-1 Supplier" is accurate. Respondent may also reasonably believe, and it may in fact be true, that Complainant, through Complainant’s sales manager, approved of Respondent’s registration and use of the militec.com domain name to sell MILITEC-1 product. Further, Respondent’s use of the domain militec.com in connection with a web site devoted to sales of genuine MILITEC-1 product may constitute a fair use under principles of trademark law. I cannot, therefore, conclude that Complainant has met its burden of establishing bad faith registration and use under Paragraph 4(b)(iv) of the Policy.

Decision

For all of the foregoing reasons, the Panel decides that Complainant has not met its burden of proof under Paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. The Panel’s decision should not be read as a substantive decision on the merits of any trademark infringement claim Complainant ultimately may choose to bring in court under applicable federal or state law. The decision is limited to the fact that, on this record, the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy.

Accordingly, the Panel concludes that the domain name militec.com should not be transferred to the Complainant.

Sally M. Abel
Presiding Panelist

Dated: February 28, 2000