DECISION

Workstream Inc. v. Integral Systems, Inc.

File Number: FA0201000103875

PARTIES

                        Complainant is Kevin D. Jackson representing Workstrem Inc. (formerly E-Cruiter.com, Inc.) (“Complainant”).  Respondent is Kevin Kelly representing Integral Systems Inc. (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

                        The domain name at issue is <workstream.com> (“the domain name”) registered with Network Solutions VeriSign, Inc. (“NSI”), a domain name service provider.

PANEL

                        The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

                        Min S. Xu, Esquire as Panelist

PROCEDURAL HISTORY

                        Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) on January 16, 2002 and was received by the Forum on January 17, 2002.

                        On January 17, 2002, the Forum sent a letter to the Complainant regarding deficiencies in the Complaint and requested the Complainant to identify any other legal proceedings that have been commenced or terminated in connection with or relating to the domain name that is the subject of the dispute, and to provide a copy of the ICANN Policy along with the revised Complaint.  The Forum received the revised Complaint thereafter in which the Complainant identified that no other legal proceedings have been commenced or terminated in connection with or relating to the domain name that is the subject of the dispute.  The Complainant also provided a copy of the ICANN Policy along with the revised Complaint.

                        The Respondent was notified that an administrative proceeding had been commenced pursuant to the Uniform Domain Name Dispute Resolution Policy, that the formal date of the commencement of the administrative proceeding was January 18, 2002, and that a Response to the Complaint and exhibits must be received by the Forum by February 7, 2002.

                        NSI sent an email to the Forum confirming that the Respondent is the current registrant of the domain name.  The Respondent is thus bound by NSI registration agreements and, therefore, bound to agree to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

                        On January 31, 2002, the Respondent filed a Response to the Complaint with the Forum.  The Response is timely.

                        Complainant and Respondent chose to have this dispute heard before a single-member administrative panel.  The Forum appointed Min S. Xu, Esquire as Panelist.

                        The Panel has reviewed and considered all the submissions to the Forum from Complainant and Respondent for rendering the decision.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

                        A. Complainant

                        Complainant contends that Respondent’s domain name is identical to the trademark and service mark that the Complainant has rights to; that Respondent has no past or current rights to or interest in the Workstream trademark, service mark or brand in general; that the Respondent acquired the domain name on April 12, 1996 but has never used it for any purpose other than to profit from its sale; and that the principals of the Respondent hold several if not hundreds of domain names in the same manner and for the same purpose.

                        B. Respondent

                        Respondent contends that “WORKSTREAM” was trademarked by Consilium, Inc., an Applied Material company (“Consilium”) in 1985, and that the Respondent has provided consulting service exclusively to Applied Materials since October 1999.  The Respondent disputes the allegations that the Respondent acquired the domain name in 1996, and contends that the Respondent acquired the domain name on June 11, 1999 with no intention to profit from its acquisition.

FINDINGS

                        Complainant filed a trademark “Workstream” in Canadian Intellectual Property Office on October 2, 2001 and proposed to use the mark in CANADA on services respecting job recruitment, corporate outplacement and individual career management, etc. (Attachment A from Complainant).

                        Respondent acquired the domain name from Workstream Technologies on June 11, 1999 and is the current registrant of the domain name. (Exhibit 2 from Respondent)

                        Consilium registered trademark WORKSTREAM with the United States Patent and Trademark Office on November 21, 1989 and renewed the trademark in 2001. (Certificate of Registration and Notice of Renewal from Respondent)  Respondent has been providing technical consulting services in conjunction with Consilium since 1999 and pursuant to such services acquired the domain name in June 1999.  As the registered trademark owner of WORKSTREAM, Consilium has approached and Respondent has consented to the assignment of the domain name to Consilium. (Letter from Consilium to Complainant)

                       

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 other the following 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

                        There is no dispute as to whether the domain name is identical to Complainant’s trademark WORKSTREAM pending registration in Canadian Intellectual Property Office or whether Complainant has rights to the trademark WORKSTREAM as a result of such registration.

                        This Panel finds that the domain name registered by the Respondent is identical to the pending Canadian trademark or service mark in which the Complainant has rights.

                        Rights or Legitimate Interests

                        Evidence provided by NSI has shown that Respondent is the registrant of the domain name.  Also, evidence provided by Respondent and Consilium have shown that Respondent has legitimate interests in respect of the domain name because Respondent has been providing consulting service to Consilium since October 1999 in connection with Workstream technical consulting service.   Consilium owns the registered trademark WORKSTREAM in the United States since 1989.  Pursuant to the consulting service, Respondent acquired the domain name in June 1999.

                        Accordingly, this Panel finds that Respondent has legitimate interests in respect of the domain name.

                        Registration and Use in Bad Faith

                        No evidence has provided to this Panel that Respondent registered or used the domain name in bad faith.

DECISION

                        It is the decision of this Panel that the domain name at issue, <workstream.com>, be retained with Respondent, and that the request to allow transfer of registration of the domain name from Respondent to Consilium is granted.

 

 

Min S. Xu, Esq., Panelist

Dated: February 25, 2002