Complainant is The Security Center, Inc., of Texas, United States of America, represented by the law firm Kennedy, Clark & Williams, P.C., United States of America.
Respondent is Michael Markwood, of Texas, United States of America.
The disputed domain name <irisdvs.com> is registered with Melbourne IT Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2011. On July 21, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name(s). On July 22, 2011, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2011.
The Center received email communications from Respondent on July 26, 2011, August 1, 2011, and August 2, 2011, several times intimating that a Response would be forthcoming. However, Respondent did not submit a Response.
The Center appointed Richard G. Lyon as the sole panelist in this matter on August 17, 2011. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel finds the following facts to be undisputed.
Complainant markets and has marketed since prior to 2004 a product or service called IRIS Digital Video Systems, also called IRIS DVS. Complainant’s website at “www.securitytexas.com” indicates that this is “a flexible video system that enables financial institutions to capture, monitor and store high-resolution digital images at individual transaction points like teller windows, as well as key locations, such as lobbies and ATM sites.”
Respondent was until November 2006 an employee of Complainant. In March 2004, while employed by Complainant, Respondent registered the disputed domain name in his own name.
The disputed domain name currently resolves to a one-page website with Respondent’s contact information and the following text:
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Michael E. Markwood | |||||||||||
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Director of Sales and Business Development | |||||||||||
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IRIS Digital Video Systems | |||||||||||
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IRIS DVS is a patented digital video system which was designed, engineered and brought to market to fit the needs of financial institutions video imaging management. With its proprietary patented image storage process, the IRIS family of products is able to store both surveillance and transaction based images for a minimum of 90 days, all with a standard hard drive of 80 Gig, thus holding costs at a minimum. The company's TOTALVISION product is the industries first true "stand alone" unit, needing no laptop or other devices to set up, program and install! | |||||||||||
In June 2011 Complainant through counsel requested that Respondent transfer the disputed domain name to Complainant. Respondent left Complainant’s counsel the following voicemail message:
Hey, Steven. This is Mike Markwood. Um, I got your email. And uh…domains are – I may have worked for the Security Center and IRIS DVS. It doesn’t matter to me. I took that name. And I’m keeping it. You want to do legal action. I’m not going to defend myself. He wants to buy it, he can buy it. If not, tell him to wait until 2014 [the expiration date of the term of Respondent’s registration of the disputed domain name].
Complainant contends as follows:
1. Complainant holds Texas common law trademark rights in IRIS Digital Video Systems and IRIS DVS by reason of its sales of this product or service for more than fifteen years. The disputed domain name is identical to the latter and confusingly similar to the former.
2. Respondent has no right or legitimate interest in the disputed domain name. As Complainant’s employee Respondent had no right to register it in his individual capacity and has no right to use it now that Respondent is no longer employed by Complainant. The use to which Respondent has put the disputed domain name, falsely stating or implying that he presently is an employee of Complainant, is not legitimate and is intended to divert business from Internet users seeking Complainant.1
3. Respondent’s improper use of the disputed domain name and subsequent offers to sell it to Complainant demonstrate bad faith. By offering (or appearing to offer) to sell Complainant’s product at the website maintained at the disputed domain name Respondent is creating confusion as to the source, sponsorship, or endorsement of Complainant’s product.
As noted Respondent did not submit a formal Response. From his email communications with the Center it appears that Respondent claims two bases his entitlement to the disputed domain name: the first-come, first-served principle of domain name registration; and his assertion that he “asked [Complainant] if [Complainant] wanted [the disputed domain name] and [Complainant] said no.”
Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant bears the burden of proof, by a preponderance of the evidence, on each of these Policy items.
Identity of the disputed domain name to IRIS DVS and its similarity to IRIS Digital Video Systems are obvious. The question is whether Complainant has established rights in these marks sufficient to invoke the Policy.
Complainant submits no evidence of a Texas state trademark registration2 and no evidence of use of its claimed marks at any time. The quoted content from Respondent’s website, though, furnishes evidence not only of Complainant’s use of it to identify its product but also of Respondent’s knowledge of that fact. Those two facts, both admitted by Respondent, suffice to carry Complainant’s burden of proof under this Policy head. See Collin County Community College District d/b/a Collin College v. Off Campus Books, Howard Hutton, WIPO Case No. D2011-0583 (similar conclusion based upon respondent’s sale of complainant-branded products); Paul McMann v. J McEachern, WIPO Case No. D2007-1597 (respondent a former customer of complainant).
There is no evidence to suggest that Complainant expressly authorized Respondent, at the time an employee of Complainant, to acquire or use the disputed domain name. By claiming to have offered it to Complainant post-registration Respondent perforce acknowledges that he registered the disputed domain name without express authority and without Complainant’s knowledge. In Applied Technology Holdings, Inc. v. u-Logic, Dan Stirling, WIPO Case No. D2010-0042, this Panel held that without express authority an officer or director of a company may not “retain or acquire” for personal use an “asset clearly corporate in nature,” in that case a domain name that incorporated the employer’s corporate name verbatim. In the circumstances of the present case the Panel has no difficulty extending that holding to a non-officer employee and to a domain name consisting entirely of the name of the employer’s product.
In an email to the Center Respondent says that Complainant declined his offer to give the disputed domain name to Complainant. Complainant alleges in the Complaint that it first learned of Respondent’s website by accident and only very recently. The Panel resolves this possible factual conflict by resort to several fundamental principles that apply to UDRP disputes.3 While Complainant retains the burden of proof on each Policy element, once Complainant makes a prima facie showing that Respondent lacks rights or legitimate interests, as Complainant here has done, the burden of production shifts to Respondent to demonstrate the contrary. (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1.) Any such demonstration requires proof, not merely an unsupported statement made neither on pain of perjury nor with the certification of accuracy, required in a formal Response by paragraph 5(b)(viii) of the Rules. And Respondent’s self-serving statement was made seven years after the fact, in the shadow of this proceeding. A panel can and should discount it accordingly. See, e.g., CVS Pharmacy, Inc. v. Top Investments, LLLP, WIPO Case No. D2011-0379 (discounting a sworn statement in similar circumstances); Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011 (same); Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416 (same).
Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy.
Respondent has plainly used the disputed domain name in bad faith, as bad faith is defined in the Policy. Offering to sell the disputed domain name to the mark owner (clause (i)) and the misleading impression that Respondent is still associated with Complainant (clause (iv)) fall within two of the non-exclusive examples of evidence of bad faith expressly provided in paragraph 4(b) the Policy. Such conduct – which is the only record evidence of any use of the disputed domain name since registration– allows the Panel to infer that Respondent (who obviously was aware of Complainant and its trademark) registered the disputed domain name with such proscribed activity, or some other opportunity to capitalize upon a corporate asset, in mind. That Respondent undertook the registration while an employee, without authority and in his own name, reinforces this inference.
Complainant has established that Respondent registered and used the disputed domain name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <irisdvs.com> be transferred to Complainant.
Richard G. Lyon
Sole Panelist
Dated: August 19, 2011
1 Complainant asserts that Respondent has since leaving Complainant’s employ worked for one of Complainant’s competitors. This charge is not supported by any evidence and not corroborated by Respondent, so the Panel takes no account of it.
2 As is true in many states of the United States, Texas has a register of trademarks. Complainant does not allege that it holds a Texas-registered trademark.
3 The discussion in the text about this issue is not meant to imply that, if Respondent’s statement were true, Complainant’s disinterest or refusal would automatically confer a right or legitimate interest in the disputed domain name upon Respondent. That question would turn on (among other things) the timing, content, and circumstances of Respondent’s offer and Complainant’s reply, such as the authority and job responsibilities of the individual who provided Complainant’s response. Without these and other details the Panel cannot hold that Complainant consented to Respondent’s personal registration. The record does not even indicate when the alleged offer took place; it could well have occurred after this dispute commenced.