WIPO Arbitration and Mediation Center

The Complainant is Innovative Measurement Solutions Inc., a corporation organized and existing under the laws of the State of Connecticut, United States of America, with a place of business at Quarry Road Technology Park, Milford, Connecticut 06460, United States of America.

The Respondent is, according to Network Solutions Whois database, Hart Info Systems, a Kentucky sole proprietorship, with a business address at 39 Brigadier Ct., Wilder, Kentucky, United States of America.

The Domain Name is <formulationworkstation.com>.

The Domain Name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America

3.1 The Complaint, filed electronically, was received on April 17, 2001, and by hard copy on April 30, 2001, naming John Melanson as contact for Hart Info Systems as Respondent.

3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.

3.3 In accordance with Paragraph 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts where the Respondent is located, as shown by the address given for the domain name holder in the concerned registrar’s Whois database at the time of the submission of the Complaint to the WIPO Center.

3.4 No legal proceedings have been initiated, as yet. (Rules, paragraph 3(b)(xi))

3.5 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500. has been made by Check, payable to World Intellectual Property Organization.

3.6 The Complainant agreed that its claim and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned registrar, (c) the registry administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.

3.7 A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent on April 17, 2001 by e-mail, facsimile and courier, in accordance with Rules, para. 2(b)].

3.8 A copy of this Complaint, has been sent or transmitted to the concerned registrar[s] on April 17, 2001 by courier addressed to Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America.

3.9 On May 2, 2001, Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the WIPO Arbitration and Mediation Center (Center) informing the Respondent that an administrative proceeding had been commenced by Complainant in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Respondent submitted his Response to the WIPO Center on May 18, 2001 and was acknowledged by the Center as having received it on May 21, 2001.

3.10 The single Panel member, Cecil O.D. Branson, Q.C. submitted a Statement of Acceptance and Declaration of Impartiality and Independence on May 29, 2001, and was duly appointed on June 5, 2001 in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by June 18, 2001.

3.11 The Panel finds that it was properly constituted and appointed in accordance with the Uniform Rules and WIPO’s Supplemental Rules.

4.1 Complainant has applied for United States federal registration of the trademark FORMULATIONWORKSTATION THE WORKFLOW SOFTWARE FOR FORMULATORS, in respect of "computer software for developing, managing and optimizing new product formulations, used by formulation scientists to create product blends consisting of one or more ingredients." The application for federal registration of this mark was filed with the United States Patent and Trademark Office on June 17, 1999, and accorded Serial No. 75/732,660. The application claims use of the mark since April 2, 1995.

4.2 Respondent conceived and developed a product during a period from 1983 – 1993 and coined the term FORMULATION WORKSTATION in 1994 and began selling products bearing the trademark in 1995. In early 1995, prior to the sale of any products, Respondent sent beta versions of the FORMULATION WORKSTATION product to clients and conducted on site presentations concerning the same. It filed a federal trademark application in July 1999.

4.3 The <formulationworkstation.com> domain name was registered on September 17, 1999.

5.1 Complainant contends that the domain name registered by Respondent is identical to the dominant literal portion of Complainant's trademark, namely, FORMULATION WORKSTATION.

5.2 Complainant contends that Respondent is without legitimate rights in the <formulationworkstation.com> domain name because Respondent is not legitimately using the domain name in connection with a bona fide offering of goods and services, is not commonly known by the domain name, either as a business, individual or other organization, is not making a legitimate noncommercial or fair use of the domain name, and Respondent has actual knowledge that the FORMULATION WORKSTATION trademark belongs to Complainant and was used by Complainant in commerce in the United States since a time prior to Respondent's registration of the domain name.

5.3 Complainant contends that Respondent registered the <formulationworkstation.com> domain name in bad faith because it is well aware of ownership of the FORMULATION WORKSTATION trademark by Complainant, due to business dealings between the parties commencing during the first quarter of 1994 in which Complainant's FORMULATION WORKSTATION mark was specifically involved, and that the Respondent was well aware of Complainant's rights in the FORMULATION WORKSTATION mark when it registered the domain name on September 17, 1999. Further, Complainant contends that the domain name was registered primarily for the purpose of disrupting Complainant's business, which business is considered to be in competition with Respondent's business, and that Respondent is using the domain name in an intentional attempt to attract, for financial gain, Internet users to the registrant’s web site or other on-line location, thereby creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.

Respondent denies that Complainant owns the trademark FORMULATION WORKSTATION, while admitting that an application for federal registration of the designation FORMULATION WORKSTATION THE WORKFLOW SOFTWARE FOR FORMULATORS was filed with the United States Patent and Trademark Office on June 17, 1999 and accorded Serial No. 75/732660. Respondent admits that the goods listed in the application are: computer software for developing, managing and optimizing new product formulations, used by formulation scientists to create product blends consisting of one or more ingredients. Respondent, further, admits that the application claims a date of first use of April 2, 1995, but Respondent disputes that Complainant has valid rights in the FORMULATION WORKSTATION trademark. Respondent says it, not Complainant, owns the FORMULATION WORKSTATION trademark.

The Panel has not received any other requests from Complainant or Respondent regarding further submissions, beyond the Complaint, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

6.1 The Complaint was submitted on the basis of the provisions of a Registration Agreement in effect between the Respondent and Network Solutions which incorporates by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy") in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent agree in writing to submit to a mandatory administrative proceeding regarding third-party allegations or abuse of domain name registration (Policy, para. 4(a)). No registration is approved in the absence of such a written submission.

6.2 Such administrative proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abuse of domain name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(a)).

6.3 The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish a procedure intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (See e.g. paragraph 2(a), Rules).

6.4 This Panel agrees with and adopts the following statement made by an earlier, distinguished, Panel:

"At the outset, it must be noted that the Panel does not have jurisdiction to decide claims of trademark infringement, dilution, unfair competition or other statutory or common law causes of action. Thus most of the legal authorities cited by the parties are not strictly applicable. Further, such causes of action require extensive factual development and analysis which these domain name administrative proceedings are not designed to accommodate. " Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190

6.5 The appropriate standard for fact-finding is the civil standard of a preponderance of the evidence. This requires that a fact is proved for the purpose of reaching a decision when it appears more likely than not to be true based on the evidence. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and ‘Madonna.com’ WIPO Case No. D2000-0847; Newman/Haas Racing v. Virtual Agents, Inc., WIPO Case No. D2000-1688

6.6 While the Panel agrees that in this matter United States law is applicable as both the Complainant and the Respondent are situated in the United States, it is not exclusive and there are essential differences between trademarks and domain names that must be borne in mind. There can be more than one registrant of the same trademark and its effect may be limited by the category of goods to which it relates, and the geographic boundaries of its territorial protection. There are no such limitations with domain names. Due to the latter’s technological limitations and boundless use, only one entity can be registered as a domain throughout the world. Thus, there is ample justification for different legal principles to apply to the Uniform Dispute Resolution Policy, its Rules, and the interpretation given to these by Administrative Panels operating thereunder. It is these Rules and the Policy with which all applicants for the registration of domain names agree to be bound.

6.7 The universal nature of the Internet and its global impact from a legal perspective are too recent to accommodate harmonization, much less unification, of laws through treaties, model laws and the like. Unfortunately, there will always be some who seek to take unfair advantage of that which is difficult to regulate. It may well be that, in the future, some better mechanism may be agreed between sovereign powers to regulate the issuance and use of domain names. In the meantime, the Policy and Rules are the best we have. In any event, no one is precluded from seeking remedies available from national courts.

In order to obtain the relief requested under the Policy, Complainant must prove in the administrative proceeding that each of the three elements of paragraph 4(a) are present:

The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

6.8 The Respondent in this case asserts ownership of valid rights in the FORMULATION WORKSTATION trademark and that it, the Respondent, marketed products with which that name was associated. These products consisted of proprietary software created by Respondent. Product literature distributed by Complainant contained the notation "Formulation Workstation is a trademark of Hart Info Systems." This Panel finds this evidence has been proved as a fact. Further, the Respondent says that Complainant was merely a dealer for Respondent, and as such Complainant did not acquire any rights in the FORMULATION WORKSTATION trademark, whereas the Complainant is more vague, asserting only that there were "business dealings" between it and the Respondent. This is consistent with what the Respondent says. This Panel accepts Respondent’s clarification of the relationship.

6.9 An examination of Complainant’s trademark application Serial No. 75/732,660 reveals that Complainant has disclaimed the terms FORMULATION WORKSTATION and the term THE WORKFLOW SOFTWARE FOR FORMULATORS. The disclaimer reads, "No claim is made as to the exclusive right to use ‘FORMULATION WORKSTATION’ . . . apart from the mark as shown." Furthermore, the file history of the application reveals that it was required to disclaim the term FORMULATION WORKSTATION on the basis that it was descriptive. The Examining Attorney wrote, "The word FORMULATION is descriptive for applicant’s goods, namely, formulation software. The word WORKSTATION is descriptive of software because it is an area including a computer or computer terminal in which software is used."

6.10 It is difficult to imagine how Complainant can claim exclusive rights in the <formulationworkstation.com> Domain Name when it expressly released exclusive rights in those terms in its communications with the Patent and Trademark Office. In any event, any rights Complainant may have in the mark are weak as it is a common, descriptive term. See, Eauto, L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096

6.11 This Panel finds that in this proceeding the Complainant has not proved to the degree necessary that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights, whereas the Respondent has proved that it has such rights.

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

6.12 This Panel confirms its finding above, and for the reasons there given, that the Respondent has rights or legitimate interests in respect of the Domain Name. Therefore, this element has not been proved by the Complainant.

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

6.13 In light of the findings made in relation to elements numbered (i) and (ii) of the Domain Name Policy above, this Panel is compelled to reject the allegation made that the Domain Name in question has been registered and is being used in bad faith.

7.1 The Rules for Uniform Domain Name Dispute Resolution Policy provide in para.15(e) that if after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

7.2 The Respondent in this case backed up all material assertions in regard to his claim to have rights or legitimate interests in respect of the Domain Name in question by documentary evidence, all of which must surely have been known to the Complainant, or at least available to it. Little if any of it was dealt with in the Complaint, although its materiality must have been apparent. Nor, did the Complainant seek leave to file further material in reply to the Respondent’s assertions.

7.3 This Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.

For the reasons given above, this Panel finds that

(i) the Domain Name <formulationworkstation.com> is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has rights or legitimate interests in respect of the Domain Name <formulationworkstation.com> ;

(iii) the Domain Name <formulationworkstation.com> has not been registered, nor is it being used in bad faith; and

(iv) the Complaint was brought in bad faith and constitutes an abuse of the Administrative Proceeding.

Cecil O.D. Branson, QC
Sole Panelist

Dated: June 18, 2001