WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Convergys Corporation v. Juan de la Cruz

Case No. D2002-0159

The Complainant is Convergys Corporation a US company, with its principal place of business at 201 East Fourth Street, Cincinnati, Ohio 45202 United States of America, represented by Frost, Brown, Todd LLC.

The Respondent is Juan de la Cruz of Metro Manila, Quezon City 1116, Philippines.

The domain name at issue is <convergys.org>.

The Registrar is eNom, Inc. of 1670 N.E.79^th Street, Suite 205, Redmond, Washington 98052, United States of America.

The Complaint was received by email on February 18, 2002, and in hard copy on February 21, 2002, by the WIPO Arbitration and Mediation Center [the Center]. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the Center's own Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 [the Supplemental Rules], the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on August 26, 1999 [the Policy], the Rules and the Supplemental Rules. The Complaint was submitted in English and the proceedings have been conducted in English. The Complainant has paid the specified fee to the Center.

The Center transmitted the requisite Registrar Verification request to eNom, Inc. on February 26, 2002, and received an email response from eNom, Inc. on the same day confirming that the domain name at issue was registered with eNom, Inc., and that the Respondent, Juan de la Cruz, is the current owner/registrant of the domain name <convergys.org>.

Proceedings in this case were formally commenced on March 7, 2002, when the Center sent a copy of the Complaint to the Respondent by courier to the postal address recorded in the Administrative Contact details for the domain name at issue and by email to the recorded Administrative Contact email address and to the generic contact address <postmaster@convergys.org>. These emails reportedly had fatal delivery errors suggesting they were inoperative. From the FedEx tracking records, it also appears that the postal address was incorrect, and the courier package was therefore ultimately returned to the Center undelivered. The notification to the Respondent advised that a Response would need to be submitted to the Center no later than March 27, 2002, to be sure of being considered in these proceedings. It being apparent that the Respondent's contact details were not correct, unsurprisingly, no Response was received by the specified deadline. Consequently, on March 28, 2002, the Center issued a Notification of Respondent Default, which was duly transmitted (attempted) to the Respondent and to the Complainant's representative by email.

On April 17, 2002, the Center appointed Mr. Keith Gymer to serve as single Panelist in these proceedings having duly received his Statement of Acceptance and Declaration of Impartiality and Independence. Email notifications of this appointment were attempted to be sent to the Respondent and sent to the Complainant's representative on the same day.

According to the Registrar's records, the domain name <convergys.org> was registered to the Respondent on August 22, 2001.

The Complainant, Convergys Inc. is evidently a global leader in outsourced billing and customer care services, is a member of the S&P 500 and the Forbes’ Platinum 400, and is listed on the New York Stock Exchange. The Complainant reportedly employs over 45,000 people worldwide and provides goods and services in more than 30 countries. Complainant’s annual revenues in 2000 exceeded $2.1 billion. [In the absence of detailed supporting evidence in the Complaint, the Panelist has checked publicly available sources, which appear to support this statement.]

The Complainant has used the trademark CONVERGYS, the mark on which this Complaint is based, since the company’s inception. [Again, the Panelist has been able to confirm that a Declaration confirming use from June 1, 1998 was evidently filed in connection with the Complainant's US trade mark registration.]

The mark consists of a coined term with no common meaning.

The Complainant claims to own 137 trademark registrations and pending applications in 47 countries for CONVERGYS. A schedule of these registrations and applications was provided as Annex 4 to the Complaint. [Regrettably, this schedule was inadequate of itself to support such a claim - the schedule provided was simply an internal listing of marks by country, with alleged status but no essential details (such as the name of the registered proprietor in each case, the filing dates, the application/registration numbers etc.). Had the mark at issue not been so inherently distinctive, it would not have been practical for the Panelist to quickly verify any of the claimed rights. As it is, the Panelist checked available on-line register details for the UK, the European Community and the US. These checks revealed that the UK and Community registrations are in fact in the name of Convergys CMG Utah Inc., which is not the Complainant, and although the Panelist is prepared to accept that on balance of probability this entity is likely to be closely associated with the Complainant, so that those rights may not be held against the Complainant, they are not directly owned by the Complainant and are therefore not accepted as establishing Complainant's rights absent any confirming evidence of such connection and control. However, US registration 2520504, filed April 21, 1998, is in the Complainant's name. The Panelist therefore accepts that the Complainant owns this registration and the associated rights in the mark.]

The US mark CONVERGYS 2520504 is registered as used in connection with computer software programs; namely programs for producing telephone system reports; business services, namely telephone management and accounting report services; computerized database management services; marketing research services; conducting marketing studies; telemarketing services; data processing services in the fields of internal telecommunication systems and information management systems; business consulting services in the fields of internal communication systems and information processing and management systems; account management services in the fields of internal telecommunication systems; telecommunication billing; generating reports detailing customer usage of telecommunications equipment; providing outsourced customer support services for others in the nature of information management and answering customer inquiries through telephonic, electronic, and worldwide computer network-based means; computer services, namely e-mail response services; telecommunication message processing services provided by means of a world wide computer network; e-mail, voicemail, cellular telephone, long-distance telephone, facsimile transmission; cellular telephone communication services; and custom computer system analysis, design and development; computer software design services and consulting services relating thereto.

The Complainant operates a primary web-site <convergys.com>, which is accessible in English, French, German, Italian, Portuguese, and Spanish.

After becoming aware of the Respondent's registration of the domain name at issue, the Complainant’s representative sent an email demand letter to the Respondent at the specified administrative address at <convergys.org> on January 22, 2002 seeking a transfer of the domain name registration. [The evidence shows that this email was evidently received, and that the domain name was therefore in use at that time at least for email, even if subsequent experience suggests it may later have been deactivated.]

The Respondent replied by email from a <yahoo.com> email address: "…I just get the domain and thought I might sell it because I paid for it. Hmmmm. What do you suggest?" The Complainant’s representative offered reimbursement for the registration fee paid to eNom, Inc. The Respondent did not respond to this offer. [Copies of email correspondence between Complainant and Registrant, were attached to the Complaint.]

Otherwise, the Complainant made a number of further contentions in the Complaint. These are summarised or paraphrased below.

The Complainant asserts that:

- it is using the mark throughout the world, and has been so using it since 1998. The CONVERGYS mark is promoted globally through advertising in trade magazines, at trade shows, and on the Internet; through press releases; and through co-promotions with other companies.

- as an invented mark, CONVERGYS enjoys the strongest protection accorded a trademark under U.S. law.

- it owns over seventy registrations (or, where appropriate, such registrations are owned in trust for Complainant) for domain names incorporating the word "CONVERGYS." A non-exhaustive schedule of these domain names was attached to the Complaint. [As for the schedule of trade marks, this was merely a listing and included no WHOIS details to definitively confirm ownership.]

- it at one time owned a registration for the domain name <convergys.org>. However, this registration was inadvertently allowed to lapse. When the Complainant became aware of this lapse in ownership, it attempted to correct the situation by re-registering the name. However, the Complainant was unable to do so because in the interim the domain name had been registered by the Respondent. [No evidence was provided to support this claim to prior ownership of the domain name.]

- the Respondent's site was alleged to be active; however, the Respondent had not placed any content on the <convergys.org> site with the exception of a "FOR SALE" notice with an email address < mailto:forsale@convergys.org>. [No evidence was submitted on behalf of the Complainant to support this assertion. A copy of the alleged web-page at least would have been desirable.]

- the Domain Name Is Confusingly Similar to the Complainant’s Trademark "CONVERGYS", which is a coined word having no meaning apart from its use as the Complainant’s trademark. The second-level domain of Respondent’s <convergys.org> domain name is identical to the Complainant’s coined mark CONVERGYS. Therefore Complainant has established confusing similarity, the first requirement of a UDRP claim.

- its use of its CONVERGYS trademark predates Respondent’s registration of <convergys.org>. The Complainant is the only entity with rights in this coined mark. The Complainant has not authorized Respondent to use or register any of its trademarks. The Respondent has not, prior to any notice of this dispute, used "CONVERGYS" or <convergys.org> in connection with a bona fide offering of goods or services. The Respondent has not been commonly known by "CONVERGYS" or <convergys.org>. The Respondent has not made a legitimate non-commercial or fair use of the domain name. The Respondent has no rights or legitimate interests in respect of the <convergys.org> domain name, so that the Complainant has established the second requirement of its UDRP claim.

- because the CONVERGYS trademark is a coined mark, because this mark is heavily promoted throughout the world (including in the Philippines where Respondent’s contact address is located), and because Complainant owns domain name registrations for this mark with other gTLDs, Respondent had to have been aware of Complainant’s trademark when Respondent registered <convergys.org>. The Domain Name is not being used in connection with any content on a web-site except an offer for sale. The Respondent has indicated, both on his web-site and by email to the Complainant’s representative, that he intends to sell the domain name. The Complainant’s offer to reimburse the registration fee was not accepted. Therefore the Respondent is offering to sell a domain name consisting of another party’s coined trademark for valuable consideration in excess of out-of-pocket expenses.

- because the Respondent must have known of the Complainant’s rights, because the Respondent is making no legitimate use of the domain name, and because the Respondent is attempting to sell a domain name consisting of the Complainant’s coined trademark for an amount in excess of his expenses, the Complainant has established the Respondent's bad faith, the third requirement for a UDRP claim.

The Complainant requests that the domain name <convergys.org> be transferred to the Complainant.

No Response to the Complaint was received from the Respondent. Insofar as any defense to the Complainant's allegations may be ascertained, it would appear to amount to the Respondent's email response to the Complainant's representative's first email advising of Complainant's rights, where the Respondent began "Sorry, I didn't know that", before going on to say that he might "sell because I paid for it".

In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that

(i) the contested 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 interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.

In the present case, the Complainant claims, and the Panelist has been able to verify to his satisfaction, that the Complainant owns registered trade mark rights in the mark CONVERGYS and that such rights predate the registration by the Respondent of the domain name at issue. The domain name at issue is <convergys.org>. The distinctive element, "convergys", is identical to the trade mark owned by the Complainant.

The Respondent made no submissions and did not make any challenge to the validity of the Complainant's rights.

The Panelist therefore accepts that the contested domain name is essentially identical to the mark (CONVERGYS) in which the Complainant has rights and that it has fulfilled the requirements of Paragraph 4(a)(i) of the Policy.

In view of the distinctive and invented nature of the "CONVERGYS" mark; the fact that the Complainant has a verified claim to trade mark rights in the mark; the Respondent has not challenged the Complainant's assertions, and as there is no evidence to support a possible claim to legitimacy, the Panelist accepts the Complainant's submissions (as summarized at 5 above) that the Respondent has no legitimate rights of its own in the domain name at issue.

Consequently, the Panelist concludes that the Respondent has no rights or legitimate interest in the domain name, so that the requirements of Paragraph 4(a)(ii) of the Policy are met.

The Respondent's defense to the Complainant's claims, insofar as it is possible to reach a view in the absence of any substantive Response, would appear to be that he did not know of the Complainant's rights. This frankly beggars belief. How else did he conceive of and why else did he register the domain name?

It seems rather more probable that the Respondent was indeed familiar with the Complainant's identity and either noticed the domain name <convergys.org> had not been registered or picked it up when the (alleged) previous registration by the Complainant was inadvertently allowed to lapse. Either way, the Respondent's actions appear to be those of a chancer hoping to make a quick buck when the Complainant woke up to the fact that its name had been taken.

The evidence shows that the domain name has been used, at least for email. For a distinctive, and apparently unique, name like CONVERGYS, the Panelist considers that any such use by a party unconnected with the owner of rights in the name would inevitably cause confusion and potential damage. Further, the Panelist agrees with the conclusion of the UK Court of Appeal in respect of the registration of distinctive names, that "[t]he placing on a register of a distinctive name […] makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name" [British Telecommunications plc. and Others v. One in a Million Ltd. and Others [1999] ETMR 61], and that this conclusion is certainly applicable in this case as the mark at issue is so particularly distinctive. The Respondent has sought to misappropriate the Complainant's rights and goodwill by registering the domain name knowing he could have no legitimate reason whatever for doing so.

Consequently, the Panelist considers that the Respondent's conduct plainly falls in the category of "bad-faith" registration and use of the domain name for the purposes of the Policy and concludes that the requirement of Paragraph 4(a)(iii) of the Policy is satisfied.

In this case, it is worth observing that the unique, invented nature of the Complainant's mark has meant that the various shortcomings noted above in the evidence as presented have ultimately not compromised the Complainant's position. However, the Complainant's case could clearly have been more convincing if more attention had been paid to providing relevant and appropriate evidence (e.g. current TESS/TARR printouts for US marks; copies of registration (+renewal) certificates for other relevant countries - i.e. particulars of Philippines registrations in this case - explanations of the derivation of the Complainant's rights where registrations are not in a Complainant's name; copies of relevant web pages, etc.). The Panelist would therefore urge any Complainant to ensure that appropriate evidence is provided, where available, to verify and substantiate critical claims and assertions relating to Paragraph 4(a) requirements. A Panelist is not obliged to refer back to a Complainant for clarification nor to make assumptions favorable to a Complainant nor to fill in the gaps if the evidence is deficient.

For the reasons given in Section 6 above, the Panelist orders that the domain name <convergys.org> is to be transferred to the Complainant.