Nominet UK Dispute Resolution Service

DRS 3943

Compiere Inc v Jaztek Ltd

Decision of Independent Expert

1.	Parties

Complainant:	Compiere Inc	
Country:	USA  

Respondent:	Jaztek Ltd
Country:	GB

2.	Domain Name

compiere.co.uk ("the Domain Name2)

3.	Procedural Background

The Complaint was lodged with Nominet on 24 August 2006.  Nominet validated the Complaint and informed the Respondent on 24 August 2006 that the Dispute Resolution Service ("DRS") had been invoked and that the Respondent had 15 working days (subsequently extended) to submit a Response.  The Respondent filed a Response on 26 September 2006.  The Complainant filed a Reply on 4 October 2006.  On 31 October 2006 the Complainant paid Nominet the appropriate fee for a decision of an expert pursuant to paragraph 7 of the Nominet DRS Policy Version 2 ("the Policy").

On 7 November 2006 Nominet appointed Andrew Clinton ("the Expert").  The Expert confirmed to Nominet that he knows of no reason why he could not properly accept the invitation to act as Expert in this case, and further confirmed that he knows of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues (if any)

None.

5.	The Facts

The Domain Name was registered in the name of the Respondent on 15 May 2002.

6.	The Parties’ Contentions

Complainant

The Complaint, so far as is material, is as follows:-

1.	The Complainant, Compiere, Inc. (hereafter “Complainant” or “Compiere”), is a Delaware corporation located in the Silicon Valley. Compiere was founded in 2000 and its COMPIERE software program, an Open Source application, quickly became the leading open-source Enterprise Resource Planning (ERP) and Customer Relationship Management (CRM) software application for small-to-medium sized enterprises, in distribution and service on a global basis. 2. Compiere owns U.S. trademark registrations for the mark COMPIERE for software which was filed in 2000 (Reg. No. 2,849,102), and for the mark COMPIERE SERVICE (Reg. No. 3,054,055). 3. Compiere also owns an International Registration for the COMPIERE trademark under the Madrid Protocol system. Intl. Reg. No. 843550. The International Registration has been extended into the United Kingdom, where it has become registered, as well as in over sixty (60) jurisdictions around the world including: Austria, Australia, Belgium, China, Czech Republic, Denmark, European Union (CTM), Finland, France, Germany, Greece, Hungary, Ireland, Italy, Japan, Netherlands, Norway, Poland, Portugal, Russia, South Korea, Spain, Switzerland, Turkey and Yugoslavia. 4. A printout from the U.K. Trademarks Database showing Compiere’s registration of the COMPIERE mark is attached as Annex A. 5. In addition, Compiere registered the domain names www.compiere.com and www.compiere.org in 2000 and 2002, respectively, and has operated a website since 2000 to promote and make available its software and services. The mark COMPIERE is prominently featured on the website. Printouts from Compiere’s website are attached as Annex B. 6. The COMPIERE mark and software have become well-known in the open source community. Compiere’s COMPIERE application has been downloaded over 900,000 times, and numerous articles have been written about Compiere or make reference to Compiere and its unique application, including in industry and trade publications such as InfoWorld, CRM Today, ComputerWorld, and Business Week Online, a sample of which are attached at Annex C. 7. By reason of such use, promotion, and protection of the COMPIERE mark, Compiere is the proprietor of substantial goodwill in the mark in the field of software. 8. Furthermore, while the COMPIERE solution is Open Source software and by definition is available for free, the COMPIERE software is backed by a network of over one-hundred (100) authorized partners worldwide that provide implementation, support, and related services to COMPIERE end users. Compiere requires its authorized partners to undergo training on the COMPIERE solutions and also sign a Partner Agreement which strictly controls their ability to use the mark COMPIERE and related domain names. 9. One of Compiere’s former partners, the Respondent, Jaztek Ltd. (“Respondent” or “Jaztek”), signed such a partner agreement on May 1, 2003. Respondent is a computer services company that specializes in implementing and supporting software solutions for accounting and IT management. Prior to executing the agreement, Jaztek was familiar with the COMPIERE product. Compiere and Jaztek representatives had discussed Jaztek’s participation in Compiere’s partner program, and Respondent had registered the Domain Name (www.compiere.co.uk). A copy of the WHOIS report for the Domain Name is attached at Annex D. 10. The Partner Agreement incorporates General Terms and Conditions published on Compiere’s websites (hereafter collectively referred to as “Agreement”) and states that “the Partner explicitly accepts the Terms and Conditions,” which may change without notice. A true and correct copy of the Agreement signed by Respondent’s representative, Michael Judd, and incorporating the General Terms and Conditions, along with relevant sections of the General Terms and Conditions, is attached as Annex E. 11. The Agreement clearly states that COMPIERE is a trademark of Compiere. The Agreement only allows partners such as Respondent to use the COMPIERE mark under certain conditions, specifically only on promotional materials and only if the partner acknowledges that it is the trademark of Compiere, Inc. Further, use of COMPIERE as part of a company name or domain name is expressly prohibited by the Agreement, except that the word “compiere” can be used on a regional domain name only if the partner: i) creates and publishes the site as a general promotion for the COMPIERE software application and not as a promotion for the partner’s services or solutions, ii) publishes the unmodified Compiere Logo with a link to Compiere’s website and acknowledgement of Compiere’s trademark and copyright, and iii) collaborates with Compiere and Compiere’s other partners. 12. The Agreement states that “use of [COMPIERE] in a domain in all other cases is a violation of our copyright and international trademark,” and states that any such use constitutes cybersquatting. 13. After becoming a Compiere partner by signing the Partner Agreement, the Respondent failed to provide support-related fees to Compiere as required by the Agreement, claiming that it had not implemented any of Compiere’s applications. Respondent has also failed to meet the conditions described in Paragraph 11 above. 14. In a January 7, 2005 e-mail to Respondent, Compiere requested that Respondent cease using the Domain Name because it violated Compiere’s intellectual property rights and constituted cybersquatting. Respondent did not comply. 15. For a time, Respondent had linked or re-directed the Domain Name to another website operated by Respondent, thereby misdirecting users looking for Compiere’s product or authorized support services to Respondent’s site. On May 3, 2006, counsel for Compiere sent a demand letter to Respondent describing Respondent’s illegal use of the Domain Name and demanding that Respondent transfer the domain name to Compiere. Respondent failed to respond. A true and correct copy of this demand letter is attached at Annex F. 16. Instead, Respondent apparently re-activated or re-posted content on the website at the Domain Name which misleads viewers into believing that a company called “Compiere UK” operates the site. The website purports to be a Compiere-owned website as it branded in this way and the text frequently refers to the operator as “CompiereUK” or “Compiere,” and contains a copyright notice stating: “Copyright © by Compiere UK – Open Source ERP & CRM.” Further, the text on the site refers to the “team at Compiere UK” and misleadingly states that this “team” has “years of experience installing, supporting and customising Compiere for the UK & European market.” Copies of printouts from the website at the Domain Name are attached at Annex G. 17. There is, however, no registered UK company called “Compiere UK” other than a company registration filed by Compiere (Complainant), and not by the Respondent. 18. Paragraph 2(a)(i) of the Policy is satisfied as there is no material difference between Compiere’s COMPIERE trademark and the Domain Name. The use of the Domain Name itself is therefore likely to cause confusion. 19. Under Paragraph 3(a) of the Policy, an “Abusive Registration” is a domain name which was either: i) registered or otherwise acquired by Respondent in a manner which took unfair advantage or was unfairly detrimental to Complainant’s rights, or ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to Complainant’s rights. Policy, para. 1 (definition of “Abusive Registration”). As explained below, there is no doubt that the Domain Name qualifies as an “Abusive Registration”: 19.1 The Respondent was aware of Compiere’s brand and business when it registered and used the Domain Name. Respondent had no bona fide use of “Compiere” as a trademark prior to registering the Domain Name. 19.1.1 The Respondent clearly selected, registered and used the Domain Name expressly for its association with Compiere’s trademark. 19.1.2 The Respondent apparently became a Compiere partner in an attempt to obtain information about Compiere’s products in order to build a competing product, or take advantage of Compiere’s goodwill in the COMPIERE mark and solution. Respondent failed to pay Compiere any support fees under the Agreement but instead built a competing product and used the Domain Name to divert consumers to use Respondent’s own product. 19.1.3 Specifically, the text at the website at the Domain Name states that the COMPIERE product is allegedly “not suitable” and “not compliant” with International Financial Reporting Standards, and that the so-called Compiere UK team (a misleading pseudonym used by Respondent) has created a new product called JazzERP which allegedly “builds on Compiere’s beginnings.” 19.1.4 The website is misleadingly branded as “CompiereUK” throughout, and features a copyright notice “Copyright © by Compiere UK” which would make users believe the site is originated by or affiliated with Compiere. 19.2 In addition, the Respondent has used the Domain Name in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights, and constitutes an “Abusive Registration” for this reason as well. 19.2.1 The Respondent is currently using the Domain Name so as to attract customers looking for products or services provided under Complainant's COMPIERE mark. 19.2.2 Once at the site, users viewing the text and content on the site are likely to believe it is an official or authorized Compiere site. The site is branded as “Compiere UK” and the text at the site refers to the “team at Compiere UK” or just “Compiere.” 19.2.3 The text at the website also states that the COMPIERE product is allegedly not compliant with certain standards, and that the so-called Compiere UK “team” has created a new product called JazzERP which allegedly “builds on Compiere’s beginnings.” This would confuse users into believing that Complainant or an authorized UK affiliate has created a new product based on the COMPIERE product. Of course, this new product is not built by Complainant at all, but instead by the Respondent. The site has a link to a site for Respondent's new product. In short, Respondent has used the Domain Name, along with text at the site, to divert customers looking for COMPIERE solutions and services, to Respondent’s other site. This is a textbook case of “cybersquatting.” 19.2.4 Again, the site is fraudulently branded with “CompiereUK” or “Compiere” throughout, and features a misleading copyright notice “Copyright © by Compiere UK”. The site has no disclaimer or other text stating that the Respondent or this so-called “Compiere UK” team, are not affiliated with Complainant. 19.2.5 Respondent has also failed to comply with the terms of the Agreement which, among other things, requires Respondent to only use the site at the Domain Name as a general promotion for the COMPIERE software application and not as a promotion for the partner’s services or solutions. Respondent also has failed to publish the Compiere Logo and failed to provide a link to Compiere’s website, as required. Under the terms of the Agreement the Respondent’s use of the Domain Name constitutes cybersquatting. 19.2.6 Respondent continues to use the Domain Name and this misleading text and content even though: i) it is fully aware of Compiere’s rights, ii) it is in breach of the provisions of the Agreement governing use of the COMPIERE brand and domain names, and iii) counsel for Complainant has demanded in writing that Respondent cease such wilful and deliberate conduct. Respondent’s use of the Domain Name is clearly abusive. 20. There is no need to show any actual confusion in order to find that there is an Abusive Registration; rather, this is merely one of the factors that may be assessed. See Policy para. 3(a)(ii); see also DRS02505 (factors in paragraph 3 of the Policy are non-exhaustive, and a likelihood of confusion could suffice) (see Annex H, paragraph 29 of the decision). 21. Respondent will not be able to demonstrate any circumstances evidencing that the registration and use of the Domain Name are not an Abusive Registration. Specifically: 21.1 Respondent was aware of the Complainant's COMPIERE mark when it registered or when it used the Domain Name (Policy 4(a)(i)); 21.2 Respondent has not complied with the terms of the Agreement as to use of trademarks and domain names, and Complainant advised Respondent of this and requested that Respondent cease using the Domain Name as early as January 2005; and 21.3 for the reasons set out above, the Respondent's use is neither legitimate non-commercial, nor fair use of the Domain Name; nor is the Domain Name generic or descriptive (Policy 4(a)(ii)). Accordingly, the Domain Name, in the hands of the Respondent, constitutes an Abusive Registration.

The Complainant seeks a transfer of the Domain Name.

Respondent

The Response, so far as is material (omitting the footnotes), is as follows:-

1.	Discussion of Trade Marks
1	The domain name compiere.co.uk was registered 15/05/2002.   The attachment A.1 and A.2 indicate that Compiere Inc’s trademark was protected in the UK from 19/12/2004.   The registration of the domain name was made 31 Months prior to when the trademark existed in the UK.   Jaztek Ltd had no knowledge of any trademark in existence when it registered the UK domain as its registration occurred before the trademark registration.  As such, JL asserts that the trademark should be disregarded for the purposes of the DRS.

2.	Background
1	The product “Compiere” is an open source product which has been developed by a community of people.  JL and others have been involved in its development since April 2002 at which time there was a total of 276 posts in forums (some of which are attributable to JL).   At that time, Compiere was known only to a few specialist people in the world and CI has relied upon the involvement of JL and others to shape the product in to the market today.  JL was influential in developing and promoting the open source product, jointly from a global perspective and solely within the UK.
2	CI has not been directly active in the UK in 2002, nor when JL registered the domain name nor at any time since, to the respondent’s knowledge.
3	JL has actively promoted Compiere in the UK since 2002 and has established Compiere in the UK, Irish, Japanese and Swedish markets.  JL has invested in promotion of the product within the UK with attendance at trade fairs, in developing marketing materials provided to the community and in the UK mainstream business press.  All promotion has been clearly associated with JL or other legal entities associated with JL.  JL has at no stage held itself out to be a representative of CI.  JL carried out promoting Compiere with the knowledge of CI and for some time with the consent and encouragement of CI.  That co-operation with CI was informally withdrawn when the UK market reached a certain level of consumer awareness. 

3.	Legitimacy of Operations & Fair Use
1	Michael Judd of JL, is a qualified accountant (FAIA and CPA) who is regarded as an expert in enterprise systems having held roles such as Financial Controller – Cable & Wireless Europe, Manager Global Financial Systems – Cable & Wireless Global, being consulted by organisations such as British Telecom, Barclays Bank, HMRC and being engaged as an industry expert in presenting at industry events.
2	The domain compiere.co.uk has been used since its registration for the provision of information free of charge via a website about how Compiere relates to the UK market which has been based on the expertise of Michael Judd.  This includes how to comply with UK Companies House reporting requirements including small business provisions and complying with European and UK VAT obligations.  It also provides information about how Compiere does not comply with IFRS which is applicable in over 66 countries. This information has never been provided by CI, nor is any member of CI qualified in the UK to give such advice, to the knowledge of the respondent.

4.	JL asserts that it carries on legitimate provision of goods and services based around enterprise business systems of which Compiere is one of those products.  JL’s registration of the domain name was intended and has always been to provide legitimate information of a non-commercial nature regarding the product.

5.	Nature of Open Source Software Projects
1	Compiere is an open source product which is free for all to contribute to, download and use, and as such, the provision of factual information utilising the domain name compiere.co.uk constitutes fair use.
2	Furthermore, CI has chosen to distribute the Compiere product as open source based on the strategic recognition that this model allows many, possibly unrelated businesses to distribute, use, support and otherwise contribute and offer services around it.  JL has been providing such services utilising Compiere alongside other products such as Sage Line 50 and SAP r/3.  CI has strategically planned and intends to benefit from businesses such as JL in promoting through word of mouth, in printed articles and online media including websites, information educating potential customers and reaching new markets.  CI has not been restricted in any manner by the operation of the compiere.co.uk website and to the contrary, this has merely increased the awareness of Compiere.
 
6.	Compiere Inc’s history on respecting IP of other parties
1	JL as a contributor to the Compiere has a claim under copyright to some of the code, as do a number of other contributors.  CI has failed to acknowledge the intellectual property of these contributions and a site recording these has been set up to have the contributions formally recognised.
2	CI displays on it’s website the OSI logo holding itself out as an organisation that has been certified by the OSI.  Our correspondence with the OSI confirms that CI does not have an OSI approved license and as such CI is openly infringing on the OSI’s IP.  JL asserts that CI has repeatedly infringed on the intellectual property of others and this domain claim is analogous to the “black pot calling the silver kettle black”.

7.	Response directly relating to the Complaint
1	In point 9 of the complaint, the complainant alleges that a partner agreement was signed on 01/05/2003.  According to the who is records of Nominet (appendix B) the compiere.co.uk domain was registered on 15/05/2002.  The agreement makes no retrospective provisions regarding domain names registered prior to application.
2	The partner agreement was not ratified and was equally and proportionately not performed by both parties.  CI did not provide any of the services they purported to provide under the agreement.
3	JL paid CI to train one of their staff members at an authorised training session in Bonn, Germany.
4	According to the DRS, the content of the website is not determinative in the DRS. However, the website did provide information specific to the product and its application in the UK.
5	The letter referred to in point 15 was never received as it was sent to the incorrect address – being 3 Molesford Road, London SW6 4BU.  The office moved to 724 Fulham Road, London, SW6 5SF on 15 December 2005 and all relevant parties were advised including the update of relevant websites.
6	The complainant correctly states in point 16 that JL has “years of experience installing, supporting and customising Compiere for the UK & European Market.” To JL’s knowledge, they still have the largest declared Compiere installation in the world of 110 users.  Michael Judd has had experience in implementing, supporting, customising and installing Compiere since early 2002.
7	In relation to point 19 of the Complainant’s submission, JL has received no unfair advantage or been unfairly detrimental to CI and their claimed right. There has been no revenue earned from the site, and the site does not hold itself out to be associated with CI.  It does provide a forum for the collection of knowledge about Compiere in the UK as evidenced by the forum system and the various contributions made by the UK community.
8	In relation to 19.1.1, the registration of the domain was prior to the UK trademark registration and for the purpose of promotion of the open source product and the sharing of knowledge in the UK.
9	In relation to 19.1.2, this is speculative, unfair and untrue.
10	19.1.3 is true and specific technical details of how Compiere does not comply with IFRS have been contributed via email to Mr Jorg Janke of CI as early as 2003.  Michael Judd is an expert in this area, and specifically, was engaged by Barclays Bank Plc to advise the Barclays group on implementation of IFRS from a systems perspective.  Michael Judd was first trained in IFRS (1AS) in 1996.
11	The Compiere UK reference on the website refers to the people independently drawn together through the discussion of the open source product Compiere in the UK.  This term represents the expert body of knowledge about the product, the expertise of which in many areas exceeds CI’s demonstrated capability.  This is legitimate and fair use of a group of people drawn together by a common interest – a concept that underpins open source and fairness globally.
12	The respondent after discussing the issue of non-compliance of the Compiere product in the UK with CI, was unable to obtain agreement from CI to integrate the source code in to the main branch.  Embracing the open source model, JL created a branch of the software and subsequently redeveloped significant parts of the original product to create a new and compliant product. 
13	In point 20, the claimant admits that no confusion has actually been evidenced by the operation of the website – and the community of people associated with Compiere are well aware that CI seeks to illegitimately protect by legal means where it is unable to innovate.
14	JL asserts it has legitimately and non-commercially operated the domain and associated website for informative purposes with expertly qualified information.  JL asserts this is fair use of the domain under Nominet’s definition. 
8.	Technical Legal Issues
1	JL asserts that the complainant has no legitimate business interest directly in the UK and hence they have no legal standing to bring a dispute within the UK.  Furthermore, they cannot protect a trademark in the UK unless they are trading in the UK or are directly actively seeking business in the UK market.  CI has made no attempt to focus on the UK as a market and hence JL contends that their trademark, though retrospectively registered in response to JL’s domain registration, is unlikely to be upheld if challenged in the UK courts.
2	CI has not used it’s mark within the UK directly.  The only exposure of the mark in the UK has been through businesses associated with JL.  It is unlikely, that CI would be able to defend its application for trademark in the UK even if it had registered it before JL registered the domain name two years prior.
3	There is no issue of passing off in this dispute.  JL never purported to be representing CI – they merely provided a forum in which a community of interested parties could discuss a topic committed to the public domain.
4	Despite the admission of the complainant that no confusion had been evidenced between CI and JL, even if confusion had occurred, there was no intention to deceive.  Specifically, JL has not diverted trade from CI as they do not actively offer implementation and support services directly to UK organisations. There has been no injury of reputation as JL is held in the highest of regards by the leading UK institutions.  There has been no confusion as to who JL is and their brand versus CI and their brand or mark.  Specifically, the compiere.co.uk website was branded differently in respect of font and colours (solid orange, purple and white) versus CI’s red and white logo.  The brands were so considerably different that it is unreasonable to expect that a reasonable person would associate them as vaguely similar.
5	At the date that the domain was registered, there was no significant goodwill in the trademark and hence there was no passing off value.

9.	Procedural Issues
1	The 15 day window to respond is unfairly detrimental to the respondent in legitimate cases.  The claimant has had an unrestricted period of time to seek a qualified legal professional with experience in such matters, to confer and collect supporting information.  As the respondent does not usually deal with or expect to deal with such issues, there was no reason to retain counsel to advise in this matter nor consult with others who have been unavailable within the narrow time window.
2	According to DRS Policy Document 2.c(i) the submission by the Complainant’s submission exceeds the word limit (word count 2,141).
3	JL has not received the hard copy via mail as outlined in Nominet’s procedure.   This precludes JL from being able to inspect the attached materials purportedly lodged with the complaint.
Reply

The Reply, so far as is material, is as follows:-

In the Response, the Respondent ("Respondent" or "Jaztek") makes a number of misleading and untrue claims.  The Complainant, Compiere, Inc. ("Complainant" or "Compiere") makes the following points in reply as set out below: 1. In point 1.1 of the Response, the Respondent claims it had no knowledge of any trade mark in existence when it registered the UK domain name www.compiere.co.uk ("Domain Name") in 2002.  The Complainant considers this statement to be disingenuous for the following reasons. 1.1 The US trade mark for Compiere was filed in 2000 in the name of Jorg Janke, Compiere CEO and founder of the Compiere Enterprise Resource Planning (ERP) and Customer Relationship Management (CRM) open source project.  The mark was subsequently assigned to Compiere.  1.2 The brand and mark has been extensively promoted by Compiere since 2000 by use on the Compiere website, through search engine marketing and on www.sourceforge.net (a leading site/forum for open source software where thousands of open sources programs are downloaded).  Compiere has a page at the site at www.sourceforge.net/projects/compiere and this contains a link to Compiere's website www.compiere.org.  Please see attached print-out at Annex A.  1.3 In June 2001, Jorg Janke spoke at the JavaOne conference, one of the leading events for Java technology developers and attended by software companies from all over the world.  There Mr Janke promoted the Compiere product and its application.  Please see news release print-out and presentation slides for Mr Janke's talk at Annex B.  1.4  By May 2002, there had been 115,694 unique web visits to the Compiere page on www.sourceforge.net, there had been 584,168 visits to Compiere web pages served by SourceForge and the Compiere software had been downloaded 269,713 times from the site www.sourceforge.net.  It is highly likely that these included downloads from the UK.  By the time the Respondent registered the domain name, Compiere was already well known and enjoyed substantial goodwill as a leading open-source ERP and CRM software application for small to medium sized enterprises both in the US and elsewhere.  Jaztek was in the same field of goods and services and it is inconceivable that Jaztek registered the Domain Name without knowledge of Compiere and its products, particularly because of its self-professed expertise and knowledge of the industry.  Jaztek had not independently devised the same brand.  2.  Jaztek makes various claims regarding the legitimacy of Compiere's operations in the UK and the nature of open source software products.  The claim in point 2.1 that Compiere was developed by a community of people is misleading.  The Compiere product was created by Jorg Janke who made it available as an open source product.  While others have contributed to the software since its initial creation, Compiere owns the brand throughout the world.  In point 2.3, Jaztek states that it has established the brand in the UK and various other countries.  Jaztek did not establish the brand in the UK or elsewhere. By May 2002, the brand was already renowned in the field of software, and particularly in the open source developers' community, through the downloading and other extensive promotion described above.  3.  In point 8.1, the Respondent asserts that the Complainant has no legitimate business interest directly in the UK and that the Compiere trade mark is unlikely to be upheld if challenged in the UK courts.  This is untrue.  There is no doubt that Compiere has a business interest use in the UK through available downloads of its software.  There is clear evidence of the mark and brand being promoted all over the world before the time of the Domain Name registration, as stated above.  The Complainant makes genuine use of its UK trade mark and there is nothing to suggest it is vulnerable to challenge.  It had common law rights prior to 2002.  In addition, the Nominet DRS Policy defines "rights" as "rights including, but not limited to, rights enforceable under English law".  In DRS 03509 (Nextag, Inc v Zurna Networks), the expert saw no reason why rights enforceable in a foreign jurisdiction should be disregarded when applying the definition of rights adopted by Nominet.  A copy of the decision is attached at Annex D.  4.  In point 7.1, the Respondent asserts that the partner agreement signed on May 1, 2003 ("Partner Agreement") makes no retrospective provisions regarding domain names registered prior to application.  Compiere's general terms and conditions ("General Terms and Conditions"), incorporated into the Partner Agreement, contain an acknowledgement by the Respondent at the time of execution that the Compiere mark is owned by Compiere.  The General Terms and Conditions are clear that Compiere can only be used as part of a regional domain name in specific situations.  A true and correct copy of the Partner Agreement, incorporating Compiere's General Terms and Conditions, was attached at Annex E of the Complaint.  In particular, Compiere can only be used if the user creates and publishes the site as a general Compiere application promotion only.  However, Jaztek has simply been using the Compiere brand to switch customers to Jaztek's own products and/or a modified version of the Compiere product to which it has not contributed any code (i.e. it has not made it available to others, which is completely antithetical to the idea and spirit behind open source).  By the time it had signed the agreement on May 1, 2003, the Respondent knew that it had already registered the Domain Name and had been put on notice of Compiere's trade mark rights, and was thus either in breach of the Agreement or in acknowledgment of Compiere's rights to the Compiere name and trade mark and thus the Domain Name*.  In either scenario, Jaztek's Response makes it clear that the Domain Name has been and is being used in bad faith.  5.  The claim in point 8.3 that Jaztek "merely provided a forum in which a community of interested parties could discuss a topic committed to the public domain" and, in 7.11, that Compiere UK simply refers to people independently drawn together through the discussion of the open source product Compiere in the UK are both untrue.  In July 2006, the site at the Domain Name appeared to be a single company site, and not a message board or open forum to provide and share information.  Please see print-outs attached at Annex G of the Complaint.  The home page stated "The team at Compiere UK have years of experience installing, supporting and customising Compiere for the UK & European market …".  This gave the appearance of an official Compiere affiliate or licensee rather than a group of individuals sharing information.  The home page then went on to provide information on Jaztek's JazzERP product.  It should be noted that the Domain Name site now re-directs to the Respondent's site www.jazzerp.org (the home page for this is attached at Annex C).  This simply highlights Jaztek's intention to trade on the Compiere name.  The site is Jaztek's site and promotes Jaztek's competing product, and is therefore a diversion of trade.  Jaztek's claim in point 8.4 that there is no diversion of trade because Compiere itself does not directly implement the product in the UK is therefore disingenuous.  Trade is diverted because Compiere's authorised partners may lose business (and Compiere in turn loses fees from partners) if customers decide to use Jaztek's competing products and competing services.  This is further evidence of the Domain Name and the Compiere brand being used simply to promote Jaztek's own services or solutions.  6.  It is therefore inconsistent of the Respondent to claim that it was promoting the Compiere brand and supposedly has some kind of claim to the Compiere brand in the UK, while at the same time stating that it was merely creating an online "open forum" to discuss the product and that this was "fair use". 7.  In point 8.4, Jaztek claims that the Complainant admits that there was no evidence of confusion.  This is untrue.  Compiere simply states that there is no need to show actual confusion in a domain name action under the Nominet DRS policy.  In addition, the Respondent states that there had been no intention to deceive on its part.  This is not one of the (non-exhaustive) factors listed in the Nominet DRS Policy as possible evidence that the Domain Name is an Abusive Registration.  However, it is clear that the Respondent used the Compiere brand in order to promote its own competing products and competing services, as stated in point 5 above.  8. The argument made in 8.4 that the website at the site is not visually similar to Compiere's site is irrelevant, for two reasons.  First, computer users looking for Compiere could type in the Domain Name in their browser and believe that the site is a Compiere-authorised site specific to the UK or the site of an authorised licensee.  Second, as this is a domain name action, it is only relevant that the Domain Name is similar to Compiere's trade mark.  Even if the content on the website had nothing to do with Compiere, there would still be potential confusion; the content on the website simply exacerbates the confusion.  9.  Under the Nominet DRS policy, independent verification that the Respondent has given false contact details is one of the (non-exhaustive) factors which may be evidence that the domain name is abusive.  One of the Respondent's addresses on the WHOis database was not correct and there was a delay in the Respondent receiving hard copies of Compiere's complaint.

7.  Discussion and Findings:

Introduction

This dispute centres on an open-source software Enterprise Resource Planning (ERP) and Customer Relationship Management (CRM) software application called Compiere ("the Compiere Product) and the competing claims of two organisations to the rights in the Compiere Product.

The Compiere Product is an open-source product in that it is available to be downloaded and used for free.  The Complainant, a Delaware Corporation located in the Silicon Valley, claims that it has the rights in the brand Compiere and that the Domain Name, which incorporates the word Compiere without adornment (save for the .co.uk suffix which is disregarded for the purposes of the DRS) is, in the hands of the Respondent (a company with its registered office in Fulham), an Abusive Registration.

The Compiere Product is well known and popular – it is said by the Complainant to have been downloaded from the internet over 900,000 times.  

The Complainant and the Respondent had some form of business relationship, the precise terms of which are in dispute, which broke down several years ago.  It appears that the Respondent has promoted the Compiere Product but there is a dispute over whether that was with the Complainant's authority or not.  

The Respondent has developed its own open-source ERP and CRM software product called JazzERP which it promotes through a website at www.jazzerp.org.  According to the Respondent JazzERP is a development of, and improvement on, the Compiere Product.

The Complainant says that the Respondent is using the Compiere brand in order to promote its own competing products and competing services.  

The Respondent says that its registration and use of the Domain Name has been to promote the Compiere Product and is legitimate and non commercial use for information purposes.  

General

Under paragraph 2 of the Policy the Complainant has to prove on the balance of probabilities; firstly, that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

Rights are defined in the Policy as including, but not limited to, rights enforceable under English law.  

In this case the Domain Name (disregarding the .co.uk suffix) and the mark in which the Complainant claims to have rights are identical.  The issue, under the first limb of paragraph 2a of the Policy, is whether the Complainant can prove, on the balance of probabilities, that it has rights in the mark Compiere.

The Complainant's case on rights is that by reason of the use, promotion and protection of the Compiere mark the Complainant is the proprietor of substantial goodwill in the mark Compiere in the field of software.  The Complainant has provided documentary evidence in the form of:-

1.	An International Madrid (UK) trade mark registration No. M843550 filed in the US on 18 September 2000 and providing protection in the UK from 19 December 2004;

2.	Print-outs from a website at www.compiere.com;

3.	Sample publications from CRM Today, ComputerWorld, Business Week Online and InfoWorld; and

4.	A news release and presentation slides for a talk given by the CEO of the Complainant at a JavaOne Conference in June 2001.

The Respondent makes 2 points in relation to the registered trade mark.  The first is the timing of the registered protection in the UK and the second is the validity of the trade mark registration.

The Respondent's case is that the trade mark should be disregarded for the purposes of the DRS on the basis that the Domain Name was registered on 15 May 2002, 31 months before trade mark protection was granted in the UK (see paragraph 1 of the Response).  

There is no requirement imposed by the DRS that the rights in the mark must pre-date the registration of the Domain Name although, of course, that may well be a relevant factor when considering the second limb of paragraph 2a of the Policy, ie whether the Domain Name is, in the hands of the Respondent, an Abusive Registration.  

The fact that the Domain Name registration pre-dates the date of the UK protection under the trade mark does not of itself prevent the Complainant from relying upon that trade mark for the purposes of establishing that it has rights in the mark.

In any event the Complainant also seeks to rely upon its common law rights in the mark Compiere.  The Complainant claims that the mark had been extensively promoted by the Complainant since 2000 by use of the Compiere website, through search engine marketing and on www.sourceforge.net (see paragraph 1.2 of the Reply).  The Complainant says that the Compiere software had been downloaded from that website 269,713 times by May 2002.

The Complainant asserts that the Respondent was aware of Compiere's brand and business when it registered the Domain Name on 15 May 2002 (see paragraph 19.1 of the Complaint) and the Complainant suggests, in the Reply, that it is inconceivable that the Respondent did not know of the Complainant and its products at that time.

The Respondent says (paragraph 1 of the Response) that it had no knowledge of any trade mark in existence when it registered the Domain Name.  The Respondent does not however deny the assertion, in paragraph 19.1 of the Complaint, that it had knowledge of Compiere's brand and business when it registered the Domain Name.  Indeed, it is clear from the Response that the Respondent was aware of the Complainant's brand and business prior to registration of the Domain Name.   The Respondent claims to have been involved in the development of the Compiere Product since April 2002 (paragraph 2.1 of the Response), says that it registered the Domain Name for the purposes of promotion of the open-source product and the sharing of knowledge in the UK (paragraph 7.8 of the Response) and that it had actively promoted Compiere in the UK since 2002 (paragraph 2.3 of the Response).

It was presumably precisely because the Respondent was familiar with the Compiere Product and wanted to promote it that the Respondent registered a domain name that incorporated the word Compiere.

The Respondent's attempt to resist the Complainant's case on rights by arguing that the trade mark protection cannot be relied upon because it was granted after the registration of the Domain Name is misconceived.  The Complainant can rely upon that trade mark; alternatively, the Complainant has shown that it has common law rights in the mark.

The Respondent attacks the validity of the UK trade mark suggesting (at paragraph 8.1 of the Response) that the trade mark is unlikely to be upheld if challenged in the UK Courts on the basis that the Complainant has made no attempts to focus on the UK as a market.  The Expert does not need to consider the validity argument advanced by the Respondent.  The issue (for the purposes of the first limb of paragraph 2a of the Policy) is whether the Complainant has been able to prove, on the balance of probabilities, that it has rights (as defined in the Policy) in the mark Compiere.  The Expert concludes that the Complainant does have rights in that mark and, as it is identical to the Domain Name, the first limb of paragraph 2 of the Policy is satisfied.

Abusive Registration

Abusive Registration is defined in paragraph 1 of the Policy to mean a Domain Name which either:

(i)	was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant’s Rights; or

(ii)	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.

Non-exhaustive factors – paragraph 3 of Policy
A non-exhaustive list of factors which may be evidence of an Abusive Registration is set out in paragraph 3a of the Policy as follows:

(i)	Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:

A.	for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;

B.	as a blocking registration against a name or mark in which the Complainant has Rights; or

C.	for the purpose of unfairly disrupting the business of the Complainant;

(ii)	Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;

(iii)	The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern; 

(iv)	It is independently verified that the Respondent has given false contact details to Nominet; or

(v)	The domain name was registered as a result of a relationship between the Complainant and the Respondent, and the Complainant:

(A)	has been using the domain name registration exclusively; and
(B)	paid for the registration and/or renewal of the domain name registration.

Under paragraph 3b of the Policy failure to use the Domain Name for the purposes of e-mail or a web-site is not in itself evidence that the Domain Name is an Abusive Registration.

It is clear from the wording of the Policy that the list of factors at paragraph 3 is non-exhaustive and that a Complainant can succeed in proving Abusive Registration without the need to prove any of those factors.  However, in order to do so it is necessary to prove that the definition of Abusive Registration, as set out in paragraph 1 of the Policy, has been satisfied.  

Non-exhaustive factors – paragraph 4 of Policy
There is a list of non-exhaustive factors which may be evidence that the Domain Name is not an Abusive Registration at paragraph 4 of the Policy.  The most relevant factor in this dispute is paragraph 4aiC which is that before being aware of the Complainant’s cause for complaint the Respondent has made legitimate non-commercial use or fair use of the Domain Name.

Discussion and findings regarding Abusive Registration

The Complainant's case on Abusive Registration can be summarised as follows:-

•	The Complainant complains of initial internet confusion and says that internet users looking for Compiere could type the Domain Name into their browser in the belief that they will be taken to a site that is authorised by or affiliated to the Complainant (paragraph 8 of the Reply);

•	The content of the website exacerbates the confusion in that users will believe that the site is originated by or affiliated with the Complainant (paragraph 19.1.4 of the Complaint); and

•	The Respondent is using the Complainant's brand to promote its own competing products and competing services (paragraph 19.2.3 of the Complaint).

The Respondent's case on Abusive Registration can be summarised as follows:-

•	All of its promotion of Compiere has been clearly associated with the Respondent or other legal entities associated with the Respondent (paragraph 2.3 of the Response);

•	The site does not hold itself out to be associated with the Complainant (paragraph 7.7 of the Response);

•	The registration and use of the Domain Name was to promote the open source product and the sharing of knowledge in the UK (paragraph 7.8 of the Response);

•	The registration and use of the Domain Name has always been to provide legitimate information of a non commercial nature regarding the product (paragraph 4 of the Response); and

•	The site is a forum for the collection of knowledge about Compiere in the UK and it is a legitimate and fair use by a group of people driven together by a common interest (paragraph 7.7 of the Response).

There is a dispute between the parties about the circumstances in which a Partner Agreement dated 1 May 2003 was signed.  The Complainant relies upon that agreement (and the terms and conditions that it incorporates) and claims that the Respondent is in breach of the terms that restrict the use of the mark Compiere.  The Respondent says that the agreement was not ratified or performed by either party.  The Expert does not, for the purposes of deciding the dispute under the DRS, need to determine the disputed issues of fact about the Partner Agreement.

The Expert has been provided with a print-out from the website dated 24 July 2006.  The text refers to the operator as "Compiere UK" or "Compiere" and it contains a copyright notice "Copyright © by Compiere UK – Open-Source ERP and CRM".  The text refers to the "team at Compiere UK" and states that the team has “years of experience installing, supporting and customising Compiere for the UK and European market”.  The Complainant relies upon these features in support of its argument that the website is branded as a Compiere website.

The website contains a box in the top left corner that reads:-
“Compiere UK:
UK ERP Support Site”.

The text on the website says that the product (which can only be a reference to the Compiere Product) is not compliant with International Financial Reporting Standards and is not suitable for any country adopting those standards.  The text says that the [Compiere UK] “team has created a new product called JazzERP which builds on Compiere's beginnings but which is more functionality lead and customized for easy implementation. 
Please feel free to review the Jazz product located at http://www.jazzerp.org".  

There is a link from the website to a website at www.jazzerp.org (a print-out of which was supplied by the Complainant).  The site at www.jazzerp.org clearly promotes the JazzERP product as “the next generation business software solution” and lists 6 businesses who are "the latest businesses to implement JazzERP".  

The Respondent says that the reference to Compiere UK on the website refers to people independently drawn together through the discussion of the open-source product in the UK and the term Compiere UK represents the expert body of knowledge about the product (see paragraph 7.11 of the Response).   The Respondent says that it has only made legitimate and non commercial use of the site for information purposes with expertly qualified information (paragraph 7.14 of the Response).  

The Respondent says that it has redeveloped significant parts of the original Compiere product to create a new and compliant product (paragraph 7.12 of the Response).  There is no doubt that the website has been used to promote the JazzERP product - it expressly refers to that product and makes various claims about it.  The Respondent does not directly deal with the point made against it that it uses the website to promote its own product.  The nearest the Respondent gets to dealing with the assertion that it is using the website to promote its own products is the statement (at paragraph 7.7 of the Response) that no revenue has been earned from the website.  

The Respondent says that the site does not hold itself out as associated with the Complainant.  However, the Expert is of the view that the website makes, or is liable to be perceived as making, a representation that there is something approved or official about the website.  It refers to the team at Compiere UK and it is says it is a ”Support Site”; it does not appear to be a forum for the collection of knowledge about Compiere.  

The website makes a direct representation that the team at Compiere UK has created a new product which has built on Compiere's beginnings but which has a number of additional benefits such as improved functionality and easier implementation.  By inference it also suggests that the JazzERP product is compliant with the International Financial Reporting Standards whereas the Compiere Product is not.  

The website has been used to provide information about the Compiere Product but with the clear intention of promoting the JazzERP product.  This is not providing legitimate information of a non commercial nature nor is it fair use of the Domain Name.  It is in effect a form of comparative advertising - by pointing out the ways in which the JazzERP product is superior to the Compiere Product (which may or may not be true) the intention is to encourage internet users to purchase the JazzERP product.  The Respondent is using the Compiere mark to attract internet users to the website.  The website contains statements that represent that there is something approved or official about the website and internet users.  If the website was simply for the provision of information of a non commercial nature about the Compiere Product there would be no need to encourage internet users to “feel free to review the Jazz product” by clicking on a link that takes them to a website that promotes that product.

The Respondent says there is no evidence of actual confusion and even if confusion has occurred there was no intention to deceive (paragraph 8.4 of the Response).  There is no requirement in the DRS to show an intention to deceive so the Expert does not need to make a finding on this point. 

For the reasons outlined above, the Expert finds that the Domain Name has been used in a manner which takes unfair advantage of or was unfairly detrimental to the Complainant’s rights and that therefore the Domain Name is, in the hands of the Respondent, an Abusive Registration.

The Respondent also makes allegations against the Complainant of infringement of intellectual property rights of third parties as well as infringement of copyright that the Respondent claims it is entitled to in some of the code in Compiere.  These are not relevant matters for determination by an expert under the DRS.

7.	 Decision

The Expert finds, on the balance of probabilities, that the Complainant has Rights in a name which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration.  The Expert directs that the Domain Name be transferred to the Complainant.

Andrew Clinton
27 November 2006