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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GEAC Computer Corporation Limited v. NEWTEC Consulting Group Incorporated
Case No. D2001-1131
1. The Parties
The Complainant is Geac Computer Corporation, Limited, Yonge Corporate Centre, Suite 601, 4100 Yonge Street, Toronto, Ontario, M2P 2B5, Canada.
Represented by Wayne C. Matus, LeBoeuf, Lamb, Greene & MacRae, LLP., 125 West 55th Street, New York, NY 10019-5389, USA ; and Thomas Fenerty, LeBoeuf, Lamb, Greene & MacRae, LLP., 260 Franklin Street, Boston, MA 02110-3173, USA.
The Respondent is NEWTEC Consulting Group, Incorporated, 16C Airport Road, Hopedale, MA 01747, USA.
Represented by Arthur M. White, Bikofsky, White & Benjamin, 435 Worcester Road, Framingham, MA 01701, USA.
2. The Domain Name and Registrar
The Domain Nam is <geac.net>.
The Registrar is Network Solutions, Inc.
3. Procedural History
The Complaint was received by WIPO by email on September 17, 2001, and in hardcopy form on September 19, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). Network Solutions, Inc. has confirmed that <geac.net> ("the Domain Name") was registered through Network Solutions, Inc. and that Newtec is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.
On September 26, 2001, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was October 16, 2001. On October 11, 2001, WIPO received a request for an extension to the Response filing date and WIPO acceded to the request on October 12, 2001. The Response was received on October 31, 2001, by fax, on November 3, 2001, by email and on November 5, 2001, in hard copy form.
WIPO issued a Notification of Response Deficiency on November 6, 2001, in relation to a minor formal defect. On November 6, 2001, WIPO received a Reply to the Response Deficiency Notification correcting the deficiency.
On November 21, 2001, WIPO received a covering letter from the Complainant’s attorneys purporting to submit a Supplemental Filing by the Complainant. Not only was the supplemental filing unsolicited and therefore outwith the scope of the Rules, but the document was only received in hardcopy form (one copy instead of four) and not in electronic form. On November 30, 2001, WIPO notified the Complainant that it proposed to transmit the case file to the Panel without the additional submission.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date originally scheduled for the issuance of the Panel’s Decision was, December 14, 2001. However, the Panel decided that it needed further information from the parties and on December 6, 2001, pursuant to Rule 12 of the UDRP Rules, the Panel issued an administrative procedural order, a copy of which is annexed to this decision.
In response to the procedural order further submissions were received from the Complainant on December 7, 2001, and from the Respondent on December 10, 2001, (albeit after the 4pm (Geneva time) deadline). The latter document commented on the former. The procedural order gave the parties until December 14, 2001, to comment on the further submission of the other and the Complainant’s comments on the Respondent’s further submissions were received by WIPO on December 14, 2001.
The Complainant’s further submission dealt not only with the substance of the Respondent’s response to the procedural order, but also took objection to the fact that that response was over 4 hours out of time. The Panel notes that the disks referred to in the Complainant’s initial response to the procedural order have never reached the Panel and that the exhibits to the Respondent’s final submission did not reach WIPO and the Panel until some 4 and 8 days respectively after the December 14 deadline.
4. Factual Background
The Complainant is a Canadian based company specializing in the design, production and distribution of computer hardware and software. It has been trading for at least 30 years. It is a very substantial company in its field.
The Complainant is the proprietor of trademark registrations of or including the name Geac in one shape or form. One such registration is US registration number 1,955,458 registered on February 13, 1996, of the name Geac in stylized form for various computer-related products. The Complainant claims first use of that mark in 1977. The Complainant operates a website at <www.geac.com>. It has owned the domain name <geac.com> since 1989.
The Respondent is a US based corporation operating out of Massachusetts. It was incorporated on April 2, 1997, and is also engaged in the field of computer-related products. It operates a website at <www.newtec.net> and offers support services for inter alia the Complainant’s Geac products.
The Respondent acquired the registration of the Domain Name in December 2000.
5. Parties’ Contentions
In summary the Complainant contends as follows:
The Domain Name is identical and confusingly similar to Geac's "Geac" trademark and service mark.
Newtec has no rights or legitimate interests in respect of the Domain Name. Geac owns prior and superior rights to the "Geac" mark and name for computers and computer-related goods and services. Newtec has not made any legitimate or authorized use of the "Geac" mark and name in connection with its own business.
Newtec obtained the registration for and used the Domain Name in bad faith because, among other things, (a) it obtained the registration primarily for the purpose of disrupting its competitor Geac's business by, among other things, causing confusion among Geac's customers and potential customers about the source or origin of goods or services offered at or in connection with the Domain Name, and (b) by using the Domain Name, Newtec intentionally attempted to attract, for commercial gain, Internet users to its <geac.net> website by creating a likelihood of confusion with Geac's "Geac" mark as to the source, sponsorship, affiliation or endorsement of the <geac.net> website and/or products or services offered on or in connection with that website.
Newtec's ownership and use of the registration of the Domain Name prevents Geac, the owner of rights in and to the "Geac" mark, from reflecting or using its "Geac" mark in such a domain name.
As of January 2001, the website owned and administered by Newtec at the <geac.net> Internet address contained a home page stating, amongst other things "Welcome to Newtec Business Intelligence Software Solutions and ERP Professional Services Organization". At another page on that website, Newtec posted the following language on a page with the heading "Geac SmartStream," which heading is a reference to another Geac product and Geac trademark:
Geac SmartStream incorporates several modules, technologies and designs that have evolved over the years. In order to work with such a product, you need to have professional expertise available. Our certified SmartStream consultants are able to help you today in both a functional and technical aspect.
On another page at that site, under the heading "About Newtec," Newtec posted the following statement:
Newtec specializes in delivering professional services and value added products for the Geac SmartStream, SAP and PeopleSoft ERP Systems.
Thus, the content posted by Newtec itself at the <geac.net> website demonstrates that:
(a) Newtec operates in the identical industry in which Geac markets and licenses its goods, software and services in connection with its "Geac" mark;
(b) Newtec offers services to customers who have licensed or purchased, or may license or purchase, Geac's computer goods, software and services;
(c) Newtec was aware of Geac's goods, software and services and of Geac's use of its "Geac" mark and its other marks in connection with those goods, software and services; and
(d) Newtec thus knew that it was unfairly competing with Geac and with Geac's marketing and licensing of its goods, software and services by its unauthorized use of Geac's marks.
Recently, as a result of Geac's demand that Newtec cease using Geac's mark and transfer the Domain Name to Geac, Newtec has stopped posting content on or using the site located at the <geac.net> Internet address, but Newtec nevertheless refuses to transfer the Domain Name registration to Geac without transfer of significant consideration from Geac to Newtec. The Panel notes that the Complaint contains no details of this ‘demand’ or of the Respondent’s alleged refusal to transfer the Domain Name other than for ‘significant consideration’. The Panel further notes that the Complaint does not allege in support of the bad faith claim that the Respondent registered the Domain Name with a view to selling it to the Complainant.
Newtec has been in existence for slightly more than two years. Thus, any use by Newtec of the "Geac" mark and name is junior and subordinate to Geac's use of and rights in and to that mark and name. The "Geac" mark and name have no relationship to any actual or intended business, products or services of Newtec. Newtec, and the products and services it appears to offer, are not known or identified by the "Geac" mark or name and Newtec's unauthorized use of the "Geac" mark and name, especially its use of that mark and name in the <geac.net> domain name in dispute, has no legitimate relationship to Newtec's business and can only confuse customers and potential customers of Geac into assuming that Newtec has some relation to, affiliation with or sponsorship by Geac. The inevitable confusion between Geac's goods and services and those of Newtec that will be engendered in the future by Newtec's use of the <geac.net> domain name will wrongfully provide Newtec with commercial gain as a result of its misappropriation of Geac's world famous goodwill and reputation for quality computer software, hardware, applications, programs, products and services.
In addition, Newtec's ownership and use of the <geac.net> domain name registration, consisting of or incorporating Geac's registered "Geac" trademark and service mark, violates United States law, the law of the country in which Newtec is incorporated and where Newtec has its offices and does business. Newtec's actions constitute, among other things, trademark infringement in violation of 15 U.S.C. sections 1114(l) and 1125(a); violation of the Trademark Anti-Dilution Act, 15 U.S.C. section 1125(c); and violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. section 1125(d). Newtec's ownership of the registration for and use of the <geac.net> domain name also violates other federal and state laws, including laws proscribing unfair competition, trademark dilution, passing off, defamation and business disparagement.
Finally, Newtec's unauthorized and illegitimate ownership of the registration for and use of the <geac.net> domain name has caused and will continue to cause irreparable injury to the goodwill and reputation of Geac and, unless the registration for the <geac.net> domain name is transferred to Geac, will continue to cause irreparable injury to Geac.
By its December 7, 2001 response to the Panel’s administrative procedural order, the Complainant reaffirms that visitors to the <www.geac.net> website originally found themselves at the Respondent’s website extracts of which are quoted above.
By its December 14, 2001 submission, the Complainant observes that since the Respondent does not now use the Domain name for marketing purposes or for web use or for email, it cannot continue to rely upon its claimed rights to do so as a legitimate reason for retaining the Domain Name. It further observes that there are other suitable domain names available, which the Respondent could use to achieve its purpose without using the Complainant’s trademark. It brands as incredible the Respondent’s claimed reasons for registering the Domain Name. It claims that the Respondent’s assertion that http traffic has always been re-routed to Network Solutions is incorrect and it produces affidavits from two employees of the Complainant’s previous law firm to the effect that the Domain Name originally connected to the Respondent’s website at <www.newtec.net>.
In summary the Respondent contends as follows:
The Respondent denies that it has acted in bad faith and without legitimate business interests in registering the Domain Name.
Newtec provides support and service to customers who have various computer systems, products and programs, including Geac Systems. As such, Newtec has a legitimate and absolute right to tell companies that it deals with Geac products.
In no way does Newtec attempt to divert business from Geac or mislead companies into thinking that Newtec is somehow connected with or is part of Geac. Although the name "Geac" may be trademarked for Canadian corporate purposes, it was not a name to which the Complainant was or is automatically entitled to for domain name purposes. In fact, Geac purchased and registered the Domain Name on June 21, 1989. Geac had the opportunity at the same time to purchase and register the Domain Name, but it apparently made a knowing and intentional decision not to do so then.
When Newtec determined it would be beneficial for their business purposes to register and purchase from Network Solutions, Inc. the Domain Name in December 2000, it did so. It has become quite evident that Geac had no use for the Domain Name from June 1989 through December 2000, but suddenly after eleven and one-half years, it feels it is entitled to and needs that domain name. That claim strains credulity.
Newtec utilizes the Domain Name for Network data traffic (FTP) from customer sites that utilize the Geac SmartStream software package. The Domain Name helps Newtec organize its data streams between their different customer bases (Geac, PeopleSoft, Newtec, etc.). Terminating the Domain Name would force Newtec to rebuild their backend data network costing Newtec thousands of dollars.
Newtec does not utilize the http band on the <geac.net> domain. Newtec has this re-routed to <networksolutions.com> so as not to generate traffic from the Domain Name. Newtec only utilizes it on the FTP band.
Geac’s action here is consistent with their previous threats against Newtec in an attempt to drive the competition out of the market. Geac has made no WIPO complaints against <smartstream.net> or <geac.org>, even though Geac has trademarked these names. Geac is selectively going after Newtec for improper motives. They are forcing a David vs Goliath battle in hopes that Newtec will collapse.
In its response to the administrative procedural order the Respondent states categorically that, notwithstanding the Complainant’s assertions to the contrary, the Domain Name has never been connected to an active website of the Respondent. Its use of the Domain Name has been restricted to the FTP band and has been for the purpose of ‘organising’ the feeds from customers to the appropriate in-house servers of the Respondent. The use of the Domain Name has been for purely internal purposes, sorting out its ‘Geac’ customers from others. Customers never realise that the Domain Name is in use. Accordingly, there is no scope for the kind of disruption and diversion of business alluded to by the Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Before addressing those issues the Panel is required to rule on the supplemental filing put in to WIPO by the Complainant on November 21, 2001, and referred to at 3 above. Not only was the supplemental filing unsolicited, it was not submitted in proper form and the Panel has been given no reason why it should allow it in to the evidence in this administrative procedure. In the circumstances the Panel declines to allow it in.
As to the parties’ submissions in response to the Panel’s procedural order, the Panel observes that in certain respects both parties are open to criticism for not meeting time limits. The Panel has seen all of them, together with the exhibits to the Complainant’s final submission and does not exclude any of them from this administrative procedure.
Identical or confusingly similar
The Complainant has demonstrated registered rights in a stylised form of its mark Geac. The Respondent accepts that the name Geac identifies the Complainant or its products.
The Domain Name comprises the Complainant’s name and trademark, Geac, and the generic <.net> suffix.
The Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
Rights or legitimate interests of the Respondent
The Panel is not unanimous under this head. The majority decision is as follows:
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. It points to the fact that Geac is the Complainant’s name, that all along the Respondent knew it to be the Complainant’s name, that the Respondent is not licensed or authorised by the Complainant to use the Complainant’s name and mark in this way and that, given the Complainant’s superior rights, no use of it by the Respondent can be said to give the Respondent any legitimate interest in the name. It relies heavily on the ‘fact’ that the Respondent initially had the Domain Name connected to the Respondent’s website, thereby in effect using the Complainant’s name and trademark to divert business, which was intended for the Complainant, and/or leading Internet users to believe that the parties are associated in some way in the course of business.
The Respondent’s case is that some of its customers use Geac products, it provides support services to its customers in relation to Geac products and it selected the Domain Name for purely internal purposes, namely to help it sort its Geac-user customers from its other customers. It denies that it has ever had the Domain name connected to a website (other than the Network Solutions website) and it asserts that its customers never see or use the Domain Name.
Guidance as to what constitute rights or legitimate interests in a domain name is to be found in paragraph 4(c) of the Policy (e.g. using the Domain Name in connection with a bona fide offering of goods or services or being commonly known by the Domain Name or making a fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers).
The Complainant’s evidence on this topic is in direct conflict with that of the Respondent. The Complainant stated in the Complaint and reaffirmed in its response to the procedural order that initially, in early 2001, the Domain Name connected to the Respondent’s website. With its final submission it produced the affidavits referred to above purporting to show that on January 9, 2001, a visit to <www.geac.net> took one straight to the Respondent’s website at <www.newtec.net>. Paragraph 4 of the affidavit of Ms. Thomas, a paralegal, states:
"On January 9, 2001, before using the WebWhacker software, I personally typed into the URL box field provided by the Netscape web browser the exact string of characters <www.geac.net>; pressed the enter button; and witnessed that the Newtec web page was directly displayed."
The majority of the Panel accepts the evidence of Ms. Thomas. The evidence is clear and it is on oath and from someone who has no obvious reason to perjure herself. Moreover, the evidence is confirmed by the CD ROM submitted by Complainant. While the hard copy of a file on the CD ROM that Complainant submitted does not show <geac.net> resolving to the Newtec website, another file on the CD ROM shows exactly that. It is apparent therefore that Complainant simply printed out the wrong file when it made its submission, but the CD ROM itself in fact confirms the affidavit evidence.
The Complainant asserts that this state of affairs (i.e. connection of the Domain Name to the Respondent’s website) continued until "recently" and only stopped following an unparticularised demand made of the Respondent by the Complainant to the effect that the Respondent cease use of the Domain Name and transfer it to the Complainant.
The problem facing the Panel is that paragraph 4(c) of the Policy, which gives examples of circumstances which SHALL [emphasis added] constitute ‘rights or legitimate interests of the Respondent in respect of the Domain Name’ includes circumstances where a fair use of the Domain Name has been established since what might ordinarily have been regarded as a bad faith intent at time of registration. In this case, as the majority of the Panel has found, the Respondent registered the Domain Name and connected it to the Respondent’s website. Visitors to the website, expecting to reach a website of the Complainant would have found themselves at the Respondent’s website and many might well have believed that the Respondent had some official connection with the Complainant.
Under no circumstances could that have constituted a fair or legitimate use of the Domain Name such as to give the Respondent a right or legitimate interest in respect of the Domain Name. The Respondent’s current use of the Domain Name may be a fair one, but whether or not it would have constituted a fair use such as to give the Respondent a right or legitimate interest in respect of the Domain Name would depend to a large extent on whether it has been a genuine use. If it is a sham adopted following a demand from the Complainant and simply to obscure a bad faith intent and to enable the Respondent to retain the Domain name, the use is neither genuine nor fair.
The issue is not an easy one for the Panel to resolve, because it does not have before it all the relevant documentation, which would be available to a court at trial, nor does it have an opportunity of observing the demeanour of the witnesses. However, a decision has to be made on what the Panel has before it and, given the finding of the majority of the Panel that the Domain Name did at one time connect to the Respondent’s website, the majority of the Panel finds that the Respondent’s repeated denial of that ‘fact’ is not consistent with a good faith intent in relation to the Domain Name and that the Respondent’s current use of the Domain Name is a sham.
The evidence as to when the Respondent converted its use of the Domain name to its current use is unsatisfactory. On the evidence of the Complainant the conversion was late in the day. The Respondent denies that there has ever been a change. The majority do not accept that denial. The majority believe it likely on the balance of probabilities that the evidence of the Complainant is accurate. The majority rejects the suggestion that a death-bed conversion to an alleged proper use can somehow cure the Respondent’s original improper use.
It is to be noted that the Domain Name is the Complainant’s trade mark without adornment save for the generic domain suffix. While the unauthorised use of the Complainant’s trade mark in this fashion is not conclusive against the Respondent for the purposes of the Policy, it does at the very least raise questions as to the legitimacy of the Respondent’s use. The Panel had its attention drawn to a number of previous decisions under the Policy holding that respondents’ uses of complainants’ trade marks (without adornment) were legitimate, but there have been at least as many previous decisions going the other way. No two cases are precisely the same. Each must be decided on its own particular facts. On the particular facts of this case the majority of the Panel has found the Respondent’s current use of the Domain Name to be a sham. The fact that on other occasions and on different facts other panels have come to other decisions is not persuasive to the majority.
Accordingly, the Panel finds (by a majority) that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Here again, the Panel is not unanimous. The majority decision is as follows:
The Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances, which if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith.
There is no evidence before the Panel to support a claim that the Respondent intended to sell the Domain Name, nor is there sufficient evidence to support claims that the Respondent registered the Domain Name with a view to ‘blocking’ the Complainant or disrupting the Complainant’s business. The relevant subparagraph of paragraph 4(b) is subparagraph 4(b)(iv), which reads as follows:
"by using the Domain Name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
Initially, the Domain Name was connected to the Respondent’s website and the majority of the Panel finds that that was the purpose for which the Respondent registered the Domain Name. In so doing the Respondent must have known and intended that a high proportion of Internet users entering the URL <www.geac.net> would be persons intending to visit a site of the Complainant. Operating in the same field as the Complainant and servicing customers using the Complainant’s products, the Respondent must have concluded that in so using the Domain Name it would attract for itself a commercial gain, namely business from people who would otherwise have gone elsewhere. Some would no doubt have taken comfort from the belief that the user of the <geac.net> domain name must have been in some way affiliated to and/or authorised by the Complainant.
For the reasons given under the preceding heading, the Panel (by a majority) accepts the Complainant’s assertion that the Respondent only dropped the connection of the Domain Name to its website and adopted the current sham use following complaint by the Complainant.
The Panel (by a majority) finds that the Domain Name was registered in bad faith and is being used in bad faith within the meaning of Paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
7. Decision (by a majority)
In the result, the Panel having found (by a majority) that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered in bad faith and is being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name, <geac.net>, be transferred to the Complainant.
Elliot Edward Polebaum
Dated: December 27, 2001
Opinion of Dissenting Panelist, Milton Mueller
I dissent from this decision.
The Respondent is a servicer and systems integrator of Geac products, and as such has a legitimate interest in the use of the Geac name. Currently, the domain name is not visible to the web-using public, but is used as an internal domain name to organize Newtec’s service network using the FTP protocol (as indeed domain names were originally intended to be used). Even if the name were used as a website, numerous UDRP decisions have recognized such a relationship as a legitimate one, as long as there is no deception or diversion. (See: WIPO Case No. D2000-0006, Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, in which a website retailer’s use of a trademarked name Militec was found to be a legitimate interest and lacking in bad faith; DeC AF-0243, Eddie Bauer Inc. v. Sales Solutions, in which use of the domain <eddiebauercamping.com> by respondent was upheld; WIPO Case No. D2000-1520, Cellular One Group v. Applied Communications, Inc. and WIPO Case No. D2000-1521, Cellular One Group v. COI Cellular One, Inc, involving the use of the "Cellular One" trademark as a domain name by retailers and resellers; and WIPO Case No. D2000-0187, Weber-Stephen Products Co. v. Armitage Hardware, in which a hardware store was permitted to register no less than 10 domain names referring to the trademarked "Weber" grills.
The majority refused even to discuss these precedents. The Complainant’s case that a significant number of their customers are being "diverted" to Newtec has no credibility. It is refuted by the current use of the name, which does not allow such diversion, and is inherently implausible due to the simple, uncontested fact that Geac saw no need to register the <geac.net> name for 11 years. The idea that customers find their way around the Internet by randomly typing in every imaginable variation of a trademark has no basis in fact. The majority decision shows no concern whatsoever for the facts about how domain names are used and whether actual diversion is taking place.
Instead, the majority allowed themselves to become fixated on the question whether the domain name <geac.net> originally was set up to point to the Newtec website. The majority’s case for both "lack of legitimate interest" and "bad faith" rests entirely on a disputed interpretation of what happened in late December and January 2001, shortly after the name was registered. Complainant contends that it resolved to Newtec’s website and was intended to divert traffic. Respondent contends that it never used the domain for website and has since taken action to make sure that the domain resolves to Network Solutions home page.
Respondent may have lied about its original use of the name and if so, its counsel damaged its case considerably. It is important to add, however, that the evidence submitted by the Complainant actually contradicted its own claim on this critical issue. The hard copy print out of the website source code provided by complainant’s lawyers showed that the domain name for the website was <newtec.net>, not <geac.net> as alleged.
At any rate, the critical fact is that there is no dispute as to how the name is being used now, and has been used for most of its registration. The name currently does not resolve to the Newtec website. And that brings us to the language of the UDRP, which clearly limits qualifying disputes to cases in which "your domain name has been registered and is being used in bad faith." President Clinton’s conduct in the Monica Lewinsky case notwithstanding, I don’t think much debate is possible about the meaning of the term "is" here. It is used in the present tense. There is no discernible use in bad faith at present or when the dispute was filed. So there is a legitimate commercial reason for the Respondent to have selected the Domain Name, and its ‘internal’ use, which currently makes it invisible to consumers, can cause the Complainant no damage whatsoever. The majority’s theory of culpability apparently is grounded in the Bible rather than the UDRP, being derived from the doctrine of original sin.
I recognize, of course, that bad faith respondents are capable of making last-minute changes in their use of a domain name in order to avoid liability under the UDRP. But that is clearly not true of this case. As far as we know, the current usage of the name has been in place for a long time. And that points to another problem with the majority decision. The Complainant’s case never documented or even mentioned the communications between Complainant and Respondent that resulted in the alleged change in the type of use of the name. The majority decision deserves criticism for its failure to document the circumstances and agreements surrounding these negotiations. If the truth be told, the majority Panelists have allowed their over-solicitude for trademark rights to draw them into taking sides in what US slang (for which there is no adequate substitute) would term a "pissing match" between two hostile business competitors. This case reflects petty animosities between businesses, and has little to do with domain name rights. A proper application of UDRP would discourage these types of cases from being contested.
Dated: December 27, 2001
WIPO Arbitration and Mediation Center
PROCEDURAL ORDER NO. 1
GEAC Computer Corp. Ltd. v. NEWTEC, Inc.
Case No. D2001-1131
Pursuant to Rule 12 of the UDRP the Panel orders each Party to provide following further information:
1. Please identify more precisely what are the documents annexed as G, H and I to the Complaint.
The footnotes on page 9 of the Complaint state that Annexes G, H and I to the Complaint are printouts of pages of the Respondent's <geac.net> website as of January 9, 2001, but Annexes G, H and I do not appear to be from a <geac.net> website of that or any other date.
1. In the Response the Respondent states that "Newtec has a legitimate and absolute right to tell companies that it deals with Geac products." Please indicate how the Respondent uses the Domain Name to achieve that purpose.
2. In the Response the Respondent states " Newtec only utilizes [the Domain Name] on the FTP band." Please explain how the Domain Name is utilized on the FTP band, and illustrate the explanation with print-ups of screens showing the Domain Name and in particular how customers will see/use the Domain Name.
3. Explain whether the Respondent's server is configured for web use and/or e-mail use in connection with the domain name <geac.net>.
The parties each have until 4pm (Geneva time) on Monday December 10, 2001 to provide the requested information, and until 4pm (Geneva time) on Friday December 14, 2001 to submit a written reply to the other party’s response to this order.
The Panel directs that the date scheduled for the issuance of a decision in this dispute be put back to December 18, 2001
Elliot Edward Polebaum
Milton L. Mueller
Dated: December 6, 2001