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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Compiere, Inc. v. ATTN: HK-COMPIERE.COM/ Domains by Proxy, Inc

Case No. D2007-0394

 

1. The Parties

The Complainant is Compiere, Inc., of Santa Clara, California, United States of America, represented by DLA Piper US LLP, United States of America.

The Respondent is ATTN: HK-COMPIERE.COM/ Domains by Proxy, Inc, of Yukon Territory, Zimbabwe.

2. The Domain Name and Registrar

The disputed domain name <hk-compiere.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2007. On March 16, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On March 16, 2007, Go Daddy Software 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 and technical contact. In response to a notification by the Center on the registrant information, the Complainant filed an amendment to the Complaint on March 28, 2007. 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”), 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 March 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2007.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 1, 2007. 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 Complainant is Compiere, Inc., a United States of America corporation with its principal place of business in Santa Clara, California. The Complainant was founded in 2000 and is a provider of open-source computer software in Enterprise Resource Planning (ERP) and Customer Relationship Management (CRM). The Complainant sells its computer software under the trademark COMPIERE and it owns a US federal trademark registration for the mark COMPIERE (Reg. No. 2,849,102) and a US federal registration for the mark COMPIERE SERVICE (Reg. No. 3,054,055).

In addition, the Complainant has in 2004 filed an International Registration for the COMPIERE mark under the Madrid Protocol system and the COMPIERE mark is protected in over 60 jurisdictions around the world including the People’s Republic of China. The Complainant also owns a trademark registration for the COMPIERE mark in Hong Kong, SAR of China.

The Complainant has registered the domain name <compiere.com> in 2000 and has used this domain name to operate a website since 2000 to promote and make available its COMPIERE software solutions. Furthermore in 2002, the Complainant also registered the domain name <compiere.org>. Both domain name registrations were made before the registration of the Respondent’s domain name in 2006.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that its COMPIERE marks are unique and that they are well known in the open-source community. The Complainant asserts that its Compiere program has been downloaded over 1,000,000 times and numerous industry and trade publications have been written about the Complainant and its leading open-source application. While the Complainant’s Compiere open-source software is available for free download, the Compiere software is supported by professional training, services and documentation. All of the Complainant’s business partners in open-source solutions have entered into licences with the Complainant which strictly controls the use of the Complainant’s COMPIERE marks and its domain names. The Complainant contends that it has rights in the federally registered COMPIERE and COMPIERE SERVICE marks as well as the stylized or scripted COMPIERE logo through extensive use in the United States of America and in many other jurisdictions all over the world including Hong Kong, SAR of China and the People’s Republic of China.

The Complainant contends that there is no difference between the Complainant’s COMPIERE marks and the disputed domain name. The only difference is that the Respondent has added the geographical indication “hk” (Hong Kong, SAR of China) to the domain name. However, the Complainant contends that the addition of this minor geographical identifier does not distinguish the disputed domain name or diminish the Complainant’s trademark rights. See Bloomberg L.P. v. Sein M.D. (NAF No. FA0101000096487); CMGI, Inc. v. Reyes, WIPO Case No. D2000-0576; and Net2phone Inc, v. Netcall SAGL, WIPO Case No. D2000-0666. It is the Complainant’s contention that the addition of the geographic indicator “hk” in this case actually exacerbates or heightens the likelihood of confusion because the Respondent is trying to pass itself off as the Complainant itself or as a Complainant-affiliated entity. The confusion generated by the Respondent’s disputed domain name is further heightened by the use of the Complainant’s distinctive stylized COMPIERE logo in the Respondent’s website and the availability of the Complainant’s software for download.

Rights or Legitimate Interests

The Complainant contends that the Respondent cannot establish any legitimate rights in the term COMPIERE and in the disputed domain name. The Complainant contends that the Respondent is trying to trade off the goodwill created by the Complainant in the COMPIERE marks. The Respondent is not merely using the COMPIERE marks to identify a company or a program but is trying to appear as the Complainant or as entity which is affiliated to the Complainant for which the Respondent is not.

The Complainant contends that the Respondent, or any of its affiliates, has never sought or obtained a licence from the Complainant to use the COMPIERE marks or its domain name. The Complainant also contends that the Respondent does not have any trademark rights, registered or unregistered, in the COMPIERE marks.

Thus, the Respondent does not have any rights or legitimate interests in the disputed domain name.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith and evidence of such is presented in relation to the following:

a. The domain name was registered to prevent the Complainant for using it and the Respondent has engaged in a pattern of such behaviour.

The Complainant asserts that the Respondent’s registration of the disputed domain name was clearly directed at the Complainant only and specifically designed to prevent the Complainant from using the domain name. The Respondent has engaged in a pattern of such registration as it has not only registered the present disputed domain name but also six other “.com” domain names incorporating the Complainant’s COMPIERE marks – <compiere-china.com>; <compiere-hk.com>; compiere-tw.com>; <chinacompiere.com>; <china-compiere.com> and <compierechina.com>. The <hk-compiere.com> domain name re-directs to <compiere-hk.com> which is registered by a Rainy Ho and the same Rainy Ho is also the registrant of the aforementioned six domain names. Furthermore, it appears that the Respondent has registered <compiere.cn>; <compiere.hk>; <compiere.tw> and each of these domain name is re-directed to the sites at <compiere-china.com>; <compiere-hk.com>; and <compiere-tw.com> respectively.

b. The domain name was registered primarily to disrupt the Complainant’s business.

While the Complainant’s Compiere open-source software is available for free download, the Compiere software is supported by professional training, services and documentation. All of the Complainant’s business partners in open-source solutions have entered into licences with the Complainant which strictly controls the use of the Complainant’s COMPIERE marks and its domain names. By registering the domain name and offering competing services through its website, the Complainant contends that the Respondent has disrupted the Complainant’s business. Potential partners are led to believe that the website is either the Complainant’s Hong Kong, SAR of China site or the site of an official authorized partner of the Complainant when this is not true. The Complainant contends that this draws away business from the Complainant and its partners and thus disrupts the Complainant’s business, and ads that potential customers and revenues are diverted away from the Complainant.

c. By using the domain name, the Respondent has attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.

The Complainant contends that the Respondent has registered the domain name in a manner calculated to improperly trade on the goodwill of the Complainant’s COMPIERE marks and that such use constitutes an infringement of the Complainant’s trademark rights. It is the Complainant’s contention that the addition of the geographic indicator HK in this case actually exacerbates or heightens the likelihood of confusion because the Respondent is trying to pass itself off as the Complainant itself or as a Complainant-affiliated entity. The confusion generated by the disputed domain name is further heightened by the use of the Complainant’s distinctive stylized COMPIERE logo in the Respondent’s website and the availability of the Complainant’s software for download. Given the Complainant’s longstanding use of the COMPIERE marks, its domain names and its websites, the Complainant contends that the Respondent must have been aware of the association of the COMPIERE marks with the Complainant and the goodwill associated with the marks when it registered and began use of the disputed domain name in 2006. Thus, the Respondent’s registration and use of the domain name is in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the Respondent has no rights or legitimate interests in respect of the domain name; and

3. the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights and continue to have such rights in the COMPIERE marks in many countries throughout the world.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark COMPIERE and (b) the prefix “hk”. In assessing the degree of similarity between the Complainant’s trademarks and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s COMPIERE marks and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products and services.

The Panel finds that the Complainant’s COMPIERE mark is a coined word with no descriptive significance to the goods or services offered under it. It is highly distinctive and it has been reproduced in its entirety in the disputed domain name. The Panel finds that the “compiere” portion to be the most prominent part of the disputed domain name which will attract consumers’ attention. The Panel accepts the Complainant’s contention that the prefix “hk” is a mere geographic description and it does not provide additional specification or sufficient distinction from the Complainant or its trademarks COMPIERE. The Panel finds that the addition of the “hk” prefix to the word “compiere” does not serve to distinguish it from the Complainant’s COMPIERE marks. Furthermore, in fact, the Panel finds that the addition of the prefix “hk” serves to emphasize the location of the Complainant’s business which increases the level of confusion of Internet users as the Respondents’ website may be mistaken as one of the Complainant’s official websites devoted to its customers in Hong Kong, SAR of China or Asia.

Bearing in mind in particular the widespread reputation of the Complainant’s trademarks both online and offline; the distinctive character of the word COMPIERE in the Complainant’s marks; the dominant component of the disputed domain name; the visual, aural and similarities between them, the Panel finds that the disputed domain name <hk-compiere.com> is confusingly similar to a trademark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “compiere” in its business operations;

2. There was no evidence on the record to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;

3. There is no indication whatsoever on the record that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services. The fact that the Respondent has used the stylized COMPIERE logo on its website and has allowed the download of the Complainant’s free open-source software cannot be relied by the Respondent to show that it is commonly known by the disputed domain name because the Respondent’s use in this case constitutes an infringement of the Complainant’s trademark rights;

4. The Complainant and its COMPIERE marks enjoy a widespread reputation with regard to open-source software solutions both online and offline. Consequently, in the absence of contrary evidence from the Respondent, the COMPIERE marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.”

The Respondent has chosen not to respond and the Panel does not have before it any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give to the Respondent a right to or legitimate interests in the domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.

The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Firstly, the Panel finds that the Complainant enjoys a widespread reputation in its COMPIERE trademarks with regard to open-source software solutions since 2000. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademarks rights at the time of the registration of the domain name. Consequently, in the absence of contrary evidence from the Respondent, the COMPIERE marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. Unfortunately, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered by the Respondent in bad faith with intent to create an impression of an association with the Complainant and its products.

Secondly, the Complainant has also adduced evidence to prove that by using a confusingly similar disputed domain name and the stylized COMPIERE logo in its website, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website offering the Complainant’s open-source software solutions for download. Given the fame of the Complainant’s COMPIERE marks, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant’s widely known and distinctive marks, intended to ride on the goodwill of the Complainant’s marks in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Consequently, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s COMPIERE trademarks and this constitutes a misrepresentation to the public that its website is in one way or the other associated or connected with the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and usage of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

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 name <hk-compiere.com> be transferred to the Complainant.

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Susanna H.S. Leong
Sole Panelist

Dated: May 15, 2007