DECISION

 

Unigraphics Solutions Inc. v. Pyramid Solutions Inc.

Claim Number: FA0108000099583

 

PARTIES

The Complainant is Unigraphics Solutions Inc., Maryland Heights, MO (“Complainant”) represented by David A. Roodman, of Bryan Cave LLP.  The Respondent is Pyramid Solutions Inc., Cedar Hill, TX (“Respondent”) represented by David M. Dingeman.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <solidedge.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.

 

Linda M. Byrne, Esq., Chair; Honorable James P. Buchele (Ret.); and Honorable Glen Ayers as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 27, 2001; the Forum received a hard copy of the Complaint on August 27, 2001.

 

On August 29, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <solidedge.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 30, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 19, 2001, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@solidedge.com by e-mail.

 

A timely response was received and determined to be complete on September 21, 2001.

 

A timely Additional Submission was received from Complainant on September 28, 2001.

 

Each of the above submissions have been considered by this Panel.

 

On October 10, 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Linda M. Byrne, Esquire; Honorable James P. Buchele (Ret.); and Honorable Glen Ayers as Panelists.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent's domain name <solidedge.com> is confusingly similar to its trademarks SOLID EDGE, SOLID EDGE EXCHANGE and SOLID-EDGE.COM trademarks; that Respondent does not have any rights or legitimate interest with respect to the infringing domain name; and that the infringing domain name was registered and is being used by Respondent in bad faith.

 

Complainant's Additional Submission addressed several issues raised in Respondent's Submission, and attached affidavits concerning the status of the parties' negotiations and the circumstances behind Complainant's attempt to amend the Network Solutions records for the disputed domain name <solidedge.com>.

 

B. Respondent

Respondent contends that <solidedge.com> is not confusingly similar to Complainant's SOLID EDGE marks.  Respondent also contends that it has used the domain name <solidedge.com> in connection with a bona fide offering of goods as Complainant's distributor, and that Respondent did not register and use the domain name in bad faith.

 

FINDINGS

Complainant sells computer graphic software under the trademark SOLID EDGE.  This software facilitates mechanical assembly, part modeling, and the production of engineering drawings.  Complainant has registered the SOLID EDGE trademark in the United States for the above products.  Complainant operates a website at solid-edge.com.  Complainant's solid-edge.com web page provides Internet users with a variety of information relating to Complainant's SOLID EDGE products.  Effective use of the SOLID EDGE software product requires proper training and knowledge regarding the features and functioning of the software.  Accordingly, Complainant has licensed certain entities to be SOLID EDGE training associates, who were authorized to provide seminars and courses on the proper installation, use and maintenance of the SOLID EDGE software.

 

In 1996, Respondent became an authorized training associate, and the parties entered into a Training Agreement on October 24, 1996.  The Training Agreement prohibited Respondent from using the SOLID EDGE trademark "in such a manner that it may cause confusion or dilution of [SOLID EDGE]" and the Training Agreement prohibited Respondent from creating an implication of Complainant's "sponsorship, association, approval or affiliation with . . . Supplemental Materials, courses, class or seminar developed by [Respondent]."  The Training Agreement also provided that in the event of termination, "regardless of the reason," Respondent would "cease the use of the SOLID EDGE marks." 

 

On August 9, 1996, Respondent registered the domain name <solidedge.com>.  Respondent invested time and money to develop and maintain the <solidedge.com> website.  About three months later, in October of 1996, Respondent entered into an agreement with Complainant to become an authorized Training Associate of the SOLID EDGE software.  Complainant had knowledge of Respondent's domain name but raised no objection during the time period that Respondent was an authorized and licensed SOLID EDGE Training Associate. 

 

In late 1997, Respondent became an "Authorized Business Partner" or distributor of SOLID EDGE software products in certain areas of the United States.  On February 4, 1998, the parties entered into a distributorship agreement, which provided that upon termination of the agreement, Respondent "shall cease to represent itself as an authorized reseller of [SOLID EDGE Products] and shall otherwise discontinue all conduct and activities which might lead the public to believe that [Respondent] was authorized to sell [SOLID EDGE] products."

 

On January 24, 2001, Complainant sent Respondent a notice of termination of the agreement, effective February 24, 2001.  Since that date, Respondent has proposed a new or restored business relationship with Complainant, but there have been no negotiations between the parties for several months. 

 

When the domain name <solidedge.com> is accessed, the user is directed to a home page with the headline "Shawn Oxley Services."  The bottom of the home page contains the statement, "Looking for Solid Edge:  http://www.solid-edge.com."  This statement is in white print, upon a light gray background, and is not prominent in size or positioning.  The "Training" page on the website makes several references to "Solid Edge Training."  The "Links" page of the website makes reference to the "Solid Edge" trademark, along with a list of other companies' trademarks for similar types of CAD systems.  There is no explicit disclaimer of affiliation between Respondent and Complainant on the <solidedge.com> website.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent 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.

 

Identical and/or Confusingly Similar

The domain name <solidedge.com> incorporates Complainant's mark in its entirety.  As such, the disputed domain name is identical to Complainant's federally registered SOLID EDGE mark.  See Amherst v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent's domain name <customcommerce.com> is identical to Complainant's CUSTOM COMMERCE trademark registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant's BODY BY VICTORIA mark).

 

This Panel concludes that the domain name <solidedge.com> is confusingly similar to Complainant's SOLID EDGE mark.

 

Rights or Legitimate Interests

Neither of Respondent's business names, Pyramid Solutions Inc. or Shawn Oxley Services, is remotely similar to the <solidedge.com> domain name.  There is no evidence to establish that Respondent is commonly known by the disputed domain name other than the fact that the Respondent was a one-time distributor of Complainant's products.  Although Respondent was licensed to use the SOLID EDGE mark at one time, this license terminated with the termination of the Distributorship Agreement on February 24, 2001.

 

By analogy, cases holding that a former employee does not have rights or legitimate interests in a former employer's mark are persuasive.  See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that as a former employee, Respondent knew or should have known Complainant's mark was in use as an integral part of the corporate name and as a trademark). 

 

It is true that Respondent offers training courses in the use of the SOLID EDGE software which arguably could constitute legitimate use of the <solidedge.com> domain name.  However, the parties' Distributorship Agreement expressly stated that Respondent "shall cease to represent itself as an authorized reseller of [SOLID EDGE Products] and shall otherwise discontinue all conduct and activities which might lead the public to believe that [Respondent] is authorized to sell [the SOLID EDGE] products."  The use of the <solidedge.com> domain name might lead the public to believe that Respondent is authorized to sell the SOLID EDGE products. 

 

Simply put, whatever rights Respondent may have had as a Distributor or Authorized Trainer at one point, they did not extend to the use of a domain name that fully incorporates Complainant's mark SOLID EDGE. 

 

For the above reasons, this Panel concludes that Respondent has no rights or legitimate interest in respect to the domain name <solidedge.com>. 

 

Registration and Use in Bad Faith

Respondent was obviously aware of Complainant's mark prior to registering the domain name <solidedge.com>, in view of the fact that the parties were contemplating a business relationship based upon the sale of Complainant's SOLID EDGE products at the time that the domain name was registered.  Respondent registered the domain name approximately three months before the Respondent and Complainant entered into any agreement to formalize their business relationship.  It is clear that Respondent registered the domain name <solidedge.com> with the intention of attracting Internet users who are actually seeking SOLID EDGE products or related services. 

 

Respondent's use of the domain name <solidedge.com> may have been legitimate and in good faith during the time that Respondent was an authorized trainer and/or distributor of Complainant's products.  This Panel is not called upon to address that issue.   However, when the Distributorship Agreement was terminated on February 24, 2001, the use of the <solidedge.com> domain name was no longer in good faith.  "Once a license has expired, use of the formerly licensed trademark constitutes infringement.  To say that the licensee has acquired rights that survive the legal termination of that license, destroys the entire concept of a license."  Mariah Boats, Inc. v. Shoreline Marina, LLC, (Nat. Arb. Forum May 5, 2000 FA94392), quoting United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 143 (3rd Cir. 1981.)

 

The content of Respondent's website increases the likelihood of consumer confusion and also indicates bad faith.  See, e.g., Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545 (9^th Cir. 1999).  The website contains no express disclaimer as to the lack of affiliation between Respondent and Complainant anywhere on the website, which is further evidence of Respondent's bad faith.  Mikimoto Co. v. Asanti Fine Jewellers Ltd., AF-0126 (eResolution Apr. 8, 2000) ("[A]lthough this is the type of domain name that naturally leads to consumer confusion, I find it particularly telling that Respondent did not offer to take reasonable measures, for example disclaimers of association with Complainant or warnings in meta tags, to help consumer confusion.").

 

Another indication of bad faith is that Respondent evidently attempted to obtain several thousand dollars from Complainant in return for transfer of the <solidedge.com> domain name.  These negotiations were apparently initiated by Complainant, which at one point offered to forgive over $500,000 in payments to Complainant in exchange for the transfer of the domain name.  The parties discussed the transfer of the domain name in a context of their overall business differences, but Respondent's apparent willingness to transfer the domain name only after payment of a large sum of money is a further indication of bad faith.

 

For all of the above reasons, this Panel concludes that Respondent used the domain name <solidedge.com> in bad faith.  Because of the apparent negotiations between the parties at the time that Respondent initially registered the <solidedge.com> domain name, we do not find that Respondent's initial registration of the domain name was necessarily in bad faith.  However, the renewal of the domain name registration, which occurred after February 24, 2001, was in bad faith.

 

In summary, this Panel finds that <solidedge.com> is confusingly similar to Complainant's SOLID EDGE trademark, that Respondent has no rights or legitimate interest in the <solidedge.com> domain name, and that Respondent has used the <solidedge.com> domain name in bad faith. 

 

DECISION

Having established all three of the elements under the ICANN policy, the Panel concludes that the requested relief should be and hereby is granted.

 

It is the decision of this Panel that the domain name at issue, <solidedge.com>, be transferred from Respondent to Complainant. 

 

 

Linda M. Byrne, Esquire, Chair Panelist

 

Dated: October 24, 2001