navision.com.mx (Mexico) - Transferencia del Dominio - 04 de Abril del 2003
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Business Solutions ApS v. Frederick Haught
Case No. DMX2003-0002
1. The Parties
The Complainant is Microsoft Business Solutions ApS, Frydenlunds Allé 6, 2950 Vedbæk, Denmark, represented in this proceeding by Mr. Knud Wallberg, Attorney-at-law, of Sandel, Løje & Wallberg, Frederiksgade 7, PO Box 9006, DK-1265 Copenhagen, Denmark. The Respondent is Mr. Frederick Haught, with address at 12914 Frances, CP 77477, Stafford, Texas, United States of America, represented in this proceeding by Mr. Bradford W. Irelan, Esq., of Irelan & Hargis, P.L.L.C., 440 Louisiana, Suite 1800, Houston, Texas 77002, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <navision.com.mx>, registered in the name of Respondent with NIC-Mexico, of Monterrey, N.L., Mexico.
3. Procedural History
On February 13 and 17, 2003, the complaint was submitted per e-mail and hardcopy, respectively. On February 14, 2003, the Center acknowledged receipt of the complaint, and requested confirmation of registration data to the concerned registrar. On the same day NIC-Mexico replied to the Center’s request, and confirmed that the domain name at issue had been registered on Respondent’s name on January 22, 2002. On February 19, 2003, the Center notified the complaint and the commencement of the proceeding to the Respondent. On March 12 and 14, 2003, Respondent submitted its response to the Center per e-mail and hardcopy, respectively. On March 18, 2002, after receiving the corresponding Statement of Acceptance and Declaration of Impartiality and Independence, the Center appointed Roberto A. Bianchi as sole panelist. On March 27, 2003, the Panel issued Procedural Order No. 1, by which it declared the closure of the proceeding, and decided that the proceeding shall be conducted in English, pursuant to Rules, Articles 16 and 21.
4. Factual Background
The following facts and circumstances are found to be true:
By submitting two certificates issued by Instituto Mexicano de la Propiedad Industrial of April 28, 2000, Complainant has evidenced that NAVISION SOFTWARE A/S holds Mexican registrations for the "NAVISION" trademark in class 9 (covering software, including recorded software) and for the "NAVISION" service mark in class 42 (covering software services for software production, software design services, etc.), both valid for ten years since the presentation date of January 18, 2000. Annex 4 to the complaint. NAVISION A/S is also the trademark holder of over 200 "NAVISION" marks in multiple countries, for the 9, 42 and some other classes. Annex 6 to the complaint. By submitting a certificate of September 11, 2002, issued by Ehrvers- og Selskabsstyrelsen – Erhvervsministeriet, Complainant has shown that as per the records of the Danish Commerce and Companies Agency the present name of NAVISION SOFTWARE A/S and NAVISION A/S is "Microsoft Business Solutions ApS". Annex 3 to the complaint.
Respondent has not contested that Complainant has rights in the NAVISION marks. Due to the change of the company name of the original trademark holder, Complainant has rights in the marks "NAVISION", whose registrations predate the domain name registration of January 22, 2002, in Respondent’s name. Apparently the domain name may have been registered before such date, but neither Complainant nor Respondent has elaborated on when and in whose name such previous registration was effected. See emails of August 30, 1999, from Mr. Haught to Mr. Kuhner and Mr. Quellhorst of NFS, and of November 16, 1999, from NIC-Mexico to Mr. Haught and Mr. Kuhner, of Team 1, Inc. Annexes 15 and 16 to the response.
5. Parties’ Contentions
Complainant contends the following:
- The contested domain name <navision.com.mx> is identical to Complainant’s trademark except for the addition of the first and second level designations ".com.mx", which should be disregarded in this context.
- The Respondent was previously engaged in a company in Texas that was recognized as a Navision Solution Center in US by Complainant.
- To be recognized as a Navision Solution Center does however not give neither the company nor owners or employees any rights to register the trademark NAVISION as part of any type of business identifier including as a domain name. Any such registration is actually in breach of the Solution Center Agreement. The specific registration of the contested domain name has not been endorsed or accepted by Complainant.
- There is no evidence of the Respondent’s 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, before any notice to the Respondent of the dispute. Respondent (as an individual, business, or other organization) has not been commonly known by the domain name and is not making a legitimate non-commercial or fair use of the domain name.
- Respondent was fully aware of Complainants right to the trademark NAVISION when he registered the contested domain name. Complainant has tried to get respondent to transfer the domain name voluntarily to them, but without success. By denying to do so Respondent knowingly and therefore intentionally prevents Complainant from reflecting the mark NAVISION in a corresponding domain name.
- At present the domain name is actively in use. The corresponding website "www.navision.com.mx" shows a standard place holder page with no specific content. This may lead Internet users to the belief that Complainant is not presently active on the Mexican market. This is untrue and is thus likely to disrupt the business of Complainant.
Respondent contends the following:
- Frederick Haught was the owner of Networked Financial Systems (hereinafter NFS) in Houston, Texas. NFS became a Navision Solutions Center in 1997, but did not execute the Solution Center Agreement attached to Complainant’s Complaint. Located in Texas, and already doing business in Latin America for many years, NFS actively began to market, sell and support Navision products in Latin America, and particularly, Mexico in 1997. From 1998 through 2000, NFS developed a uniquely Mexican Spanish version of the Navision product localized for the Mexican market. This new product, developed by NFS at its sole expense, incorporated the accounting and financial rules of the Republic of Mexico. Mr. Haught conducted seminars and conferences as part of an extensive marketing campaign throughout Mexico. Ultimately, his company developed numerous successful client relations with various Mexican corporations, and international companies with operations in Mexico. Moreover, NFS succeeded in developing at the specific referral or invitation of Navision Software, or Navision Software US, numerous customers in Mexico. Navision wholly supported NFS’ work in the Mexican market. NFS’ presence in the Mexican market became so significant that it developed a website under the domain name of <navision.com.mx> for prospective clients to find it and for existing customers to contact the company. Haught was the administrator for the domain name from the inception. Navision knowingly supported its software sold by NFS to Mexican clients. NFS developed various marketing and sales collateral materials identifying its business development activities and ongoing product sales and service activity in Mexico, with specific reference to the "www.navision.com.mx" website. Navision knew about, received and accepted these marketing materials. Demonstrations of the website in Spanish from the domain name <navision.com.mx> were made to hundreds of Navision officers, shareholders, managers, and agents (NSC’s) at several events held in 1999 and 2000.
- NFS's activities were undertaken with the full knowledge and consent of Navision. In fact, Navision management, including corporate officers, met with Mr. Haught for the express purpose of discussing NFS’ marketing activities and presence in the Mexican market. Navision supported NFS’s marketing objectives in Latin America, and particularly Mexico. Several officers and employees who knowingly participated in NFS’ marketing program for Mexico. Mr. Haught had extensive discussions with Soren Fink Jensen in the autumn of 1998 and again proceeding and during the Navision World Conference in the spring of 1999 concerning NFS’s penetration of the Mexican market. NFS presented the Mexican version of the Navision software to Navision at the Navision World Conference in April of 1999, and demonstrated the website to Soren Fink Jensen and Rene Stockner of Navision. Many of the officers and members of Navision management encouraged Mr. Haught to continue developing business in Mexico because, at that time, Navision had no other representatives adequately servicing the Mexican market. While Navision declined to expand into the Mexican market at that time, Navision expressed its appreciation of his expansion into the Mexican market and further encouraged him to continue doing so. Haught on behalf of NFS re-registered the domain name in November of 1999. Navision referred clients, such as Maersk NTR to NFS for the Mexican add on.
- NFS closed its business operations in October of 2000, for reasons unrelated to Latin American sales. Mr. Haught retained the domain name, <navision.com.mx>, since that time with the intent and hope of restoring his Latin American business for Navision. Haught expended, through NFS, substantial resources to develop the Mexican market, and the corresponding domain name at issue in this proceeding. Navision neither compensated Haught for the costs of development of the domain nor the business in Mexico. Complainant takes the peculiar position that Respondent registered and used the domain name in bad faith because "Respondent was fully aware of Complainant’s right to the trademark Navision when he registered the contested domain name." Mere use of the Navision name, however, fails to constitute bad faith. As demonstrated above, Respondent did not register or acquire the domain name "primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complaint who is the owner of the trademark or service mark....." Rather, the domain name was acquired by Mr. Haught in connection with his business activities as a Navision Solutions Center with full knowledge and consent of Navision. Mr. Haught likewise has not registered the domain name in order to prevent Navision from "reflecting the mark in a corresponding domain name." Mr. Haught has taken no action whatsoever to prevent Navision from using its trademark, which it does in a different domain name. Mr. Haught has not registered the domain name primarily for the purposes of disrupting the business of Navision. Mr. Haught is not actively competing with Navision nor has he used the <navision.com.mx> domain name to interfere with the business of Navision.
- Mr. Haught has not used the domain name with the intent to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his website. As Complainant has acknowledged, the website is not currently in active use. Thus, Mr. Haught does not use and has not used the domain for any illicit or improper effort to cause confusion with Navision customers.
6. Discussion and Findings
6.1 Identity or Confusing Similarity.
The Panel finds that the domain name is identical to Complainant’s marks NAVISION. The addition of ".com.mx" in the domain name is irrelevant. See WIPO Case No. D2000-0075 InfoSpace.com, Inc. v. Tenenbaum Ofer, April 27, 2000, finding that "(t)he addition of a hyphen and ".com" are not distinguishing features". In sum, Complainant has proved the requirement of "Política", Paragraph 1,a,i.
6.2 Rights or Legitimate Interests
Respondent has been engaged in or was a shareholder of Networked Financial Systems, Inc. ("NFS"), a company in Houston, Texas, that was recognized as a Navision Solution Center. Complainant contends that a Navision Solution Center, or its owners or employees, have no rights to register the trademark as part of any type of business identifier, including a domain name. Complainant relies on an un-signed and un-dated copy of a Navision Solution Center agreement. It contends that the registration of the domain name <navision.com.mx> was a material breach of such agreement. Respondent contends that it has not executed such agreement, which was drafted after NFS had been recognized as a Navision Solution Center, and even after NFS had ceased business. The copyright date of the agreement is October 2001. Annex 7 to the complaint.
It appears that NFS as a Navision Solution Center independently and at its own risk developed a Spanish version of the Navision Financials software, including an adaptation to Mexican accounting standards under Mexican law. NFS expected to become a distributor of Navision products and services for Mexico. Whatever the reasons such expectation did not become a reality.
A discussion about the business relationship between a Navision Solution Center and Complainant or Complainant´s predecessors in name, and the corresponding rights and duties of the parties, is beyond the scope of this domain name dispute, except to the extent strictly necessary to determine whether Respondent had rights in the domain name under the "Política". The Parties have not elaborated about the actual content of those rights and duties. Absent an executed agreement or other evidence, this Panel cannot examine such matter further, an issue that should eventually be better dealt with before a court with jurisdiction.
Respondent contends that NFS developed marketing and other materials identifying its business development activities and ongoing product sales and service activity in Mexico "with specific reference to the www.navision.com.mx website", and that "Navision knew about, received and accepted these marketing material". In support of such contention Respondent shows a hardcopy of a message sent to several persons all of them affiliated with NFS. Annex 16 of the response. The message's subject is <navision.com.mx>. However none of the recipients are affiliated with Complainant or its predecessors in name. Annex 21 is an email from Ms. Susana Zumaya to Mr. Haught. No reference is made in this email to the "www.navision.com.mx" website. Annex 17 is a copy of an email from Mr. Benno Richter of Balzers company to Mr. Segarra of NFS. There is no reference to the domain name either. In fact the Panel could not find any fact or material in this record supporting Respondent's contention that Complainant or its predecessors consented, accepted or acquiesced the fact of the registration of <navision.com.mx> in Respondent's name.
The domain name was registered in Mr. Haught's name in January 2002. On June 19, 2002, Mr. Wallberg representing Navision A/S sent a letter to Mr. Haught concerning his registration of <navision.com.mx>, stating that such registration had not been authorized by the trademark’s holder, and requesting Mr. Haught to transfer the domain name to Mr. Wallberg's client for a compensation of the registration expenses. In its reply of July 12, 2002, Mr. Irelan representing Mr. Haught stated that his client was a shareholder and officer in a company that became a Navision Solution Center in 1997, and that NFS requested Navision to allow the company to be the distributor of Navision products in Mexico. Mr. Irelan adds that Navision declined to expand to Mexico, that Mr. Haught´s company closed operations in October of 2000, and that Mr. Haught has retained the domain name <navision.com.mx> since the firm ceased doing business, with the intent and hope of rejuvenating his Latin American business for Navision.
The Panel believes that the independent development by NSF of an Spanish version of the Navision software does not by itself confer Respondent rights in the domain name.
As for future use of the domain name, according to Mr. Irelan's letter to Mr. Wallberg, NFS closed operations in October of 2000. The domain name registration was made in January 2002. Mr. Haught appears as to presently having "the intent and hope of rejuvenating his Latin American business for Navision". Política, Paragraph 1,c,i requires that preparations for a future use are "demonstrable", i.e. elements must be present that allow to reasonably infer that a future use is intended. Respondent has not presented the Panel with any such elements of an intended future use.
As for the present use of the domain name, the corresponding website consists of just a web page under a title reading "Welcome to the website of "www.tulum1.com", and some instructions about how to upload web content to a web server. There is no reference to Complainant’s products or services. Annex 12 to the complaint. Furthermore, as seen by the Panel on April 3, 2003, by using its browser, the "www.tulum1.com" site is currently "under construction", and no conclusions can be drawn about its nature. The actual content of Respondent’s web page does not allow to conclude that Respondent is presently selling Complainant’s goods or services under Complainant’s registered trademark, or that Respondent’s web page reproduces Complainant’s mark, or that Respondent tries to show that it is associated with Complainant, or that he is stating that it is Complainant’s distributor, and thus, that it is using the domain name in connection with a bona fide offering of Complainant’s goods or service. See WIPO Case No. D2000-0187 Weber-Stephen Products Co. v. Armitage Hardware, May 11, 2000, section 6-B, where a panel found in favor of respondent Armitage.
As relates past use of the domain name, it is undisputed that before having received a notice of the dispute Mr. Haught and NFS had full knowledge that the NAVISION mark belonged to Complainant or to its predecessors in name. As NFS and Mr. Haught conducted their business as a "Navision Solution Center", it is highly unlikely that "Navision" as a name corresponding to the domain name was used in connection with a bona fide offering of services.
It is true that the hardcopy of an email sent on February 4, 1999, by Mr. Haught to Mr. Fink-Jensen of Navision at firstname.lastname@example.org shows several attached Word files with a description (in Spanish) of "Navision Financials para Latino América" ("vista del producto", "mayor general", "ventas y cobros"). Annex 1 to the response. On each page of the attachments there is a footer reading "Networked Financial Systems, Inc. "http://www.navision.com.mx" Teléfono en Houston 281-447-0070". The response has been certified as required by Rules Article 5,b,viii. Response, chapter VII. Considering that the certification covers the Annexes to the response the Panel admits such evidence within the limited scope of these proceedings. However, no consent, acceptance or acquiescence by Complainant of the use of the disputed domain name can be inferred from the record. The email of 2-4-99 and the rest of the evidence presented by Respondent, lead the Panel to find that, in developing the Spanish version and adaptation of the Navision software and offering it to prospective customers, partners or other Navision Solution Centers, Respondent was acting on its own risk, and that directly or through NFS has not used the "Navision" name in connection with a bona fide offering of software and consulting services.
Accordingly the Panel finds that Respondent has no rights or legitimate interests in the domain name ("Política", Paragraphs 1,a,iii and 1,c,i).
6.3 Registration and Use in Bad Faith
Complainant contends that Respondent 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. Respondent denies this, arguing that Complainant has registered its mark under another "navision" .com.mx domain name.
Paragraph 1,b,ii, of the "Política" can be translated from Spanish into English as follows:
"the domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct".
Complainant does not contend or prove that Mr. Haught has "engaged in a pattern of such conduct". This wording is usually construed by panels as meaning the registration by a respondent of several other (usually more than two) domain names reflecting trademarks belonging to third parties with a similar purpose. There are no elements on the record showing that Mr. Haught has previously or presently engaged in any such registrations.
However this Panel believes that even in the absence of "a pattern of such conduct" a registration with a purpose of preventing a trademark´s holder to reflect its mark in a corresponding domain name could still be alleged to be a registration in bad faith if other circumstances of bad faith are present.
In fact Complainant contends that the present content of the "www.navision.com.mx" website can lead Internet users to believe that Complainant is not presently active on the Mexican market, and that such belief is likely to disrupt the business of Complainant.
The Panel believes that the present use of the domain name does not bear any relation to an offer to sell NAVISION products or to provide NAVISION-related services. The corresponding web page consists of a text absolutely devoid of any offering of products or services, except for some very basic instructions about how to upload content to any website. This Panel is satisfied from this fact that an average Internet user can infer that Complainant is not presently active on the Mexican market, an that such fact may likely result in a disruption of the business of Complainant.
The Panel finds that Complainant has met its burden under "Política", Paragraph 1,a,iii, in that it proved that the domain name at issue has been registered and is being used in bad faith.
The Panel finds that domain name at issue is identical to Complainant’s NAVISION marks, that Complainant proved that Respondent has no rights or legitimate interests in the domain name, and that Respondent has registered and is using the domain name in bad faith.
For the above reasons, the Administrative Panel requires that the <navision.com.mx> domain name registration be transferred from Respondent to Complainant.
Roberto A. Bianchi
Dated: April 4, 2003