Dassault Systemes SolidWorks Corp. v. The CAD Source, Inc. / ATTN SOLIDWORKSUNIVERSITY.COM / care of Network Solutions
Claim Number: FA1012001361947
Complainant is Dassault Systemes SolidWorks Corp. (“Complainant”), represented by Joshua S. Jarvis of Foley Hoag LLP, Massachusetts, USA. Respondent is The CAD Source, Inc. / ATTN SOLIDWORKSUNIVERSITY.COM / care of Network Solutions (“Respondent”), represented by Patrick Maderia of Law Office of James Kneller PC, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <solidworksuniversity.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned certify 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.
Honorable Ralph Yachnin (Ret.) and Paul M. Decicco as Panelists and Honorable Karl V. Fink (Ret.) as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2010; the National Arbitration Forum received payment on December 7, 2010.
On December 7, 2010, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <solidworksuniversity.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 29, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@solidworksuniversity.com. Also on December 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 28, 2010.
A timely Additional Submission by Complainant was received and determined to be complete.
All submissions were considered by the Panel
On January 5, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Ralph Yachnin (Ret.) and Paul M. Decicco as Panelists and Honorable Karl V. Fink (Ret.) as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Dassault Systèmes Solid Works Corp. (“Solid Works”) offers comprehensive computer-aided design (CAD) products and related services around the world. Founded in 1993, its three-dimensional (3D) software tools are used by over one million product designers and engineers worldwide across many industries.
The SOLIDWORKS mark is registered in over 45 countries, including the United States. In the U.S., Complainant is the owner of incontestable Registration No. 2,118,733 of the mark SOLIDWORKS, which has been registered since December 9, 1997 and used since 1995. Complainant uses the trademark and trade name SOLIDWORKS in connection with numerous products and Complainant also offers a variety of services under the SOLIDWORKS mark, including support, training, PP and certification services.
Complainant is the registered holder of 200 Internet domain names that include the mark SOLIDWORKS, including without limitation the <solidworks.com> domain name. As a result of Complainant’s substantial investments and high standards of quality, the SOLIDWORKS mark is well-known in the industry and is recognized throughout the world, including the United States, as signifying the high quality of Complainant’s products.
Respondent’s domain <solidworksuniversity.com> is confusingly similar to Complainant SolidWorks’ registered trademark SOLIDWORKS.
Respondent is neither an agent nor a licensee of Complainant, and has never been an agent or a licensee of Complainant, and therefore has no right to use of the SOLIDWORKS mark in its domain name.
Respondent registered <solidworksuniversity.com> approximately 11 years after the mark SOLIDWORKS was first used in the United States, approximately 11 years after Complainant filed an application to register the mark SOLIDWORKS with the United States Patent and Trademark Office, and approximately 9 years after the mark SOLIDWORKS was registered with the United States Patent and Trademark Office.
Respondent’s registration of the subject domain name prevents valid use of the domain by the Complainant, and therefore restrains the legitimate and proper use of the domain name and unlawfully tarnishes the Complainant’s mark.
Respondent cannot meet its burden to demonstrate any legitimate rights to the domain. On information and belief, Respondent is using the domain name solely to redirect visitors to the website located at <tristar.com>, which features a variety of products and services that compete with Complainant’s products and services, including CAD software and training courses. Thus, use of SOLIDWORKS mark in the domain name <solidworksuniversity.com> is not in connection with a bona fide offering of goods or services.
Respondent was aware of Complainant and the nature of Complainant’s business when Respondent registered the domain. Respondent is either active in the same industry, is the owner of the <tristar.com> website, or is at least using the subject domain name to redirect visitors to that website, which offers CAD software and related services that directly compete with Complainant’s goods and services.
Even if Respondent did not have actual knowledge of Complainant’s trademark and trade name, and the association between the term “SOLIDWORKS” and Complainant, Respondent had constructive knowledge thereof. Under 15 U.S.C. § 1072, registration of Complainant’s mark constitutes constructive notice of that mark.
Respondent’s constructive knowledge of Complainant’s mark is established by the fact that Respondent, in registering the infringing domain with Registrar Network Solutions, agreed to the following provision:
REPRESENTATION AND WARRANTIES. You agree and warrant that: (i) neither your registration nor use of the any of the Network Solutions services nor the manner in which you intend to use such Network Solutions Services will directly or indirectly infringe the legal rights of a third party…
Because Complainant’s U.S. trademark registration of SOLIDWORKS is available online at <uspto.gov>, and because a simple trademark search would have revealed that mark, Respondent’s bad faith registration may be inferred from Respondent’s representation in the registration agreement.
The arbitrary and fanciful qualities of Complainant’s mark strongly suggest that Respondent did not independently arrive at the conclusion that <solidworksuniversity.com> would constitute a profitable referral source for <tristar.com>. The domain is not a logical choice of name apart from its obvious association with Complainant’s long-established business selling CAD software and services.
TriStar Inc. continues to use the domain name in bad faith despite actual knowledge of its infringing conduct.
Respondent has registered and used the domain name in bad faith because it hindered Complainant’s customers from contacting Complainant. Respondent acquired the domain name either with willful disregard for Complainant’s rights, or with a deliberate plan to divert customers of Complainant who expect Complainant to own the domain name for its own business. Such customers are likely to be confused as to whether the ultimate website – <tristar.com> – is related to or affiliated with Complainant.
B. Respondent
TriStar has been in business since 1988 and has specialized in the CAD and PLM markets since that time. Respondent has at different times focused more of its business on hardware, software and training and consulting but always in the CAD and PLM markets. We have never had a complaint from a customer who was confused that we were Solidworks Corp.
Recently the Complainant approached us about buying <solidworksuniversity.com>. They said they are not interested in any other name we have with the “mark” solidworks only <solidworksuniversity.com>. That fact shows they do not believe there is a trademark violation. There are many domains registered with the mark “solidworks” in them and they are not attempting to have those given to them so their complaint is not valid.
TriStar Computer (now known as TriStar) was partnered with Solidworks Corp. in the late 1990s. The companies packaged software with hardware and advertised together nationally. While Solidworks provided the software in that relationship TriStar computer provided the hardware and the training on the CAD workstation – teaching users CAD and CAD techniques.
The current owners of TriStar purchased TriStar computer in 1999 and signed agreements to sell software packages and provide training. An agreement with a software company is not required to teach consumers how to use that software and Universities throughout the country teach solidworks. Consumers are not confused that these organizations are associated with Solidworks Corp and those that come to Solidworks University are not confused either. TriStar has operated the name <solidworksuniversity.com> for over 4 and one half years. They have been training CAD users and marketing the “CAD University” concept for over 10 years.
Solidworks Corp. executives, including the President and founding members of Solidworks Corp and members of their Board of Directors have been aware that TriStar is in the CAD business and that we educate and train individuals on various CAD platforms. Respondent began speaking with them about <solidworksuniversity.com> in 2002.
Respondent is not misleading the public. Respondent uses the name to deliver a bona fide offering of training and education to consumers on CAD platforms and techniques.
Respondent has been an agent of the Complainant previously as it merged TriStar Computer Corporation with Arizona CAD in 1997.
Complainant was aware of the business being developed and participated in crafting ideas and conceptions of how the businesses could work together.
The domain name was registered to offer information and services to consumers.
The mark is not confusingly similar to <solidworks.com>. As evidenced by the number of domains with the mark solidworks, the public does not mistake these domains to all be with the same company. Solidworksuniversity, as its name implies, could be a place to get an education.
Respondent changed the website because Solidworks Corp claimed we were misleading the public.
The fact that the Respondent has knowledge of Solidworks Corp. is not significant. TriStar knew of SolidWorks Corp as it is in the CAD business.
C. Additional Submissions
Complainant
Respondent is an entity called Cad Source, Inc. Respondent Cad Source, Inc. does not claim to have been a partner of Complainant or a party to any agreement with Complainant. Respondent has not alleged or provided any evidence demonstrating the relationship between Respondent and “TriStar,” TriStar, Inc, TriStar Computer, or any other TriStar entity.
“Tri-Star Computer Corporation” was one of Complainant’s “Solution Partners” starting in January 1999 and ending in January 2001. A Solution partner is a company that provides a product that is somehow complementary to SOLIDWORKS software products. Pursuant to a Solution Partnership Logo License Agreement, a Solution partner is authorized to use a Solution Partner Logo (which contains the term SOLIDWORKS) in connection with the marketing of specific, compatible productions. Tri-Star Computer Corporation was registered as a Solution Partner in a reseller of SolidWorks products, and is not a general licensee of the SOLIDWORKS mark.
The Agreement authorized use of the Logo – not the SOLIDWORKS mark alone -- only in connection with the Starstation Workstation and only in a limited fashion. The Agreement prohibited use of the Logo or similar marks during and after the term of the Agreement.
The agreement expired in 2001, and Respondent -- a different business entity – registered the <solidworksuniversity.com> domain name five years later, in 2006. At that time neither Respondent nor Tri-Star Computer Corporation was Complainant’s partner.
While Complainant approached TriStar Inc. in the past regarding the possibility of becoming a reseller of Complainant’s products, an agreement could not be reached. Complainant’s delay in challenging Respondent’s ownership of the domain name is not relevant to a domain name dispute under the UDRP.
Complaint denies that Respondent has ever been an agent of Complainant, and Respondent has never been authorized to act on behalf of Complainant. Respondent has proffered no proof to substantiate its assertion that such an agency relationship ever existed.
Respondent claims that it uses the domain name “to deliver a bona fide offering of training and educating platforms and techniques.” Those are products and services that compete directly with Complainant’s products and services. Respondent does not allege or provide any evidence to suggest that it sells Complainant’s SOLIDWORKS products or training related to SOLIDWORKS products. Respondent is the largest reseller of PTC products (one of Complainant’s major competitors).
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant has presented evidence to show that it owns many trademark registrations worldwide for its SOLIDWORKS mark, including such registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,118,733 issued December 9, 1997). The Panel finds that submission of such evidence establishes Complainant’s rights in its SOLIDWORKS mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant argues that Respondent’s <solidworksuniversity.com> domain name is confusingly similar to Complainant’s SOLIDWORKS mark. Complainant notes that the disputed domain name contains its entire mark while adding the generic term “university” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s SOLIDWORKS mark under Policy ¶ 4(a)(i) where the domain name contains the entire registered mark of Complainant while adding the generic term “university” and the gTLD “.com.” See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is neither an agent nor licensee of Complainant and that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <solidworksuniversity.com> domain name identifies “The CAD Source, Inc.” as the registrant of the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s disputed domain name resolves to a third-party website located at <tristar.com> that features a variety of products and services that compete with Complainant’s products and services in the “CAD” software and training industry. Therefore, Complainant contends that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel agrees and finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Complainant has proven this element.
Complainant argues that Respondent is diverting Internet users away from Complainant’s business and to the business of a third-party that markets and sells competing products and services in the “CAD” industry. Although Complainant does not specifically make an argument under Policy ¶ 4(b)(iii), the Panel finds that Respondent’s use of the domain name to divert Internet users to a third-party website that displays and sells various competing products and services is evidence of bad faith registration and use under Policy ¶ 4(b)(iii) where it may be inferred that such use disrupts Complainant’s business. See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant further argues that Respondent’s use of the disputed domain name confuses Internet users as to the affiliation or ownership of the resolving website with Complainant’s mark and business. Complainant alleges that Respondent is using the domain name to resolve to a third-party website that advertises and displays various competing services and products relating to the “CAD” industry in which Complainant has operated for many years. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to a third-party website that advertises and sells competing products and services, presumably for financial gain, is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), where there is a likelihood of confusion on the part of Internet users as to the sponsorship or affiliation of the website and Complainant’s mark and business. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the SOLIDWORKS mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Respondent states it had knowledge of Complainant which is sufficient evidence to support a finding that Respondent had notice of Complainant’s mark.
Complainant has proven this element.
If the doctrine of laches may be applied to UDRP proceedings, Respondent has not demonstrated that the delay in bringing the instant UDRP proceeding has prejudiced Respondent or is otherwise unfair. Therefore, laches does not apply.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <solidworksuniversity.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Chair
Honorable Ralph Yachnin (Ret.), Panelist
Paul M. DeCicco, Panelist
Dated: January 28, 2011
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