WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mackenzie Laboratories Inc. v. Networqs and Nel-Tech Labs, Inc.
Case No. D2000-1162
1. The Parties
The Complainant is Mackenzie Laboratories, Inc., a California corporation located at 1163 Nicole Court, Glendora, California 91740, U.S.A.
The Respondents are Networqs and Nel-Tech Labs, Inc., both located at 101 Zachary Road, Manchester, New Hampshire 03109, U.S.A. The Complaint identified Networqs as the domain name registrant and Nel-Tech Labs, Inc. as the "beneficial registrant" of the disputed domain name. The Response was filed on behalf of both of them.
2. The Domain Name and Registrar
The domain name at issue is:
The Registrar for the domain name is Network Solutions, Inc., of 505 Huntmar Park Drive Herndon, Virginia 20170-5139, U.S.A.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on August 31, 2000 by email and on September 4, 2000 in hardcopy. The Complainant paid the required fee.
On September 14, 2000, the Center sent to the Registrar a request for verification of registration data. In a response on September 22, 2000, the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that such name is registered in Respondent Networqs� name. The Registrar�s response also indicated that Network Solutions� 4.0 Service Agreement was in effect.
On September 28, 2000, the Center advised the attorney for Complainant that, in view of terms of the 4.0 Service Agreement, an amendment to the paragraph of the Complaint relating to "Mutual Jurisdiction" would be required if the case were to proceed. A copy was provided to Respondent. Complainant provided the Center with the Amendment by email on September 28 and by hardcopy on October 3, 2000.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on October 5, 2000 sent to the Respondent, with a copy to the Complainant, a notification of the administrative proceeding together with a copy of the Complaint. This notification was received by Respondents. The formal date of the commencement of this administrative proceeding is October 5, 2000.
On October 20, 2000, the Center received Respondents� Response by email with hardcopy received on October 23, 2000. The Response is unusual. It states that Respondents "have no objection to the Domain Name being given to� [Complainant]. The respondents have been ready since November 12, 1999, to do so."
The Center invited William L. Mathis to serve as Panelist in this proceeding and he sent to the Center his Statement of Acceptance and Declaration of Impartiality and Independence. On November 14, 2000, the Center notified the parties of the appointment of William L. Mathis as a single member panel.
4. Factual Background
Complainant owns Principal Register Registration No. 2,251,140 for the trademark MACKENZIE for "Repetitive communication devices, namely audio and video message repeaters for use with public address systems, telephone, loudspeakers, and point of sale advertising systems." It issued June 8, 1998, on an application filed January 8, 1998.
According to the Complaint, the Complainant has been in the business of providing goods of the type described in the registration since 1954.
The Complaint also alleges that Complainant registered a domain name on May 29, 1998, and began operating a web site under it on June 2, 1998.
The Complaint alleges, and the Response does not deny, that the Respondent Nel-Tech Labs, Inc. competes with Complainant in the sale of digital messaging equipment.
The Complaint further alleges, and the Response does not deny, that when the disputed domain name was used as a URL in November 1999, the Internet user was diverted to Nel-Tech Labs� web site .
Complainant sent a cease and desist letter to Respondent Nel-Tech Labs, Inc. on November 11, 1999. This provoked a response from Nel-Tech�s president Scott Stapleford, indicating that, as of November 12, 1999, "the domain name is no longer directed to our web site. We are also presently releasing the registration of same." These actions were said to have been taken "voluntarily as a gesture of good will. Nel-Tech Labs, Inc. has done nothing illegal."
The letterhead on which the Nel-Tech Labs response was printed indicates that the company�s business relates to "Digital Audio Managing Systems."
Page 7 of the Complaint in this case states that, as of August 2000, the disputed domain name had not in fact been released to Complainant and Internet users still were being diverted to the Nel-Tech Lab site when they used the disputed domain name as a URL.
After receiving the Complaint in this case, Mike Spenard of Networqs Internet Business Services wrote on September 21, 2000, to the Center. He confirmed the willingness in November 1999 to release the domain name to Complainant but said that Complainant never followed up with transfer information. He also said that his company had stopped directing www. in November of 1999 and that the "domain name records were removed from our server entirely in Sept. 2000."
However, it appears that an acceptable settlement was not reached. On September 28, 2000, Complainant expressed to the center a desire that the present proceeding be initiated.
5. Parties� Contentions
A. Complainant
Complainant�s contentions are summarized in paragraph 11 of the Complaint.
They are that:
"(1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) The domain name was registered and is being used in bad faith."
Complainant seeks the transfer of the disputed domain name to Complainant.
B. Respondents
The Respondents deny (1) that the disputed domain name was registered and was being used in bad faith, and (2) that the disputed domain name infringes on Complainant�s trademark rights, and (3) that the Respondents have acted in bad faith at any time in regards to this matter, and (4) that Complainant has been harmed by Respondent�s actions.
6. Discussion and Findings
Identity or Confusing Similarity
Complainant�s allegation that it owns trademark rights in MACKENZIE is confirmed by its federal trademark registration and is not challenged in the Response. Similarly, unchallenged is Complainant�s assertion that the disputed domain name is confusingly similar to Complainant�s MACKENZIE trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
Registration and Use in Bad Faith
Section 4(b) of the Uniform Domain Name Dispute Resolution Policy under which this administrative proceeding is taking place describes some circumstances which, if found to exist, will be evidence of the registration and use of the domain name in bad faith. Four descriptions are presented in subsections (i), (ii), (iii) and (iv). They are presented in the alternative. That is, a finding of the existence of the circumstances in any one of the four descriptions will qualify such circumstances as evidence that a disputed name has been registered and is being used in bad faith.
Subsection 4(b)(iv) describes circumstances of particular pertinence to this case:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complaint describes a mode of use of the disputed domain name by which Internet users were attracted to an unintended site. A domain name confusingly similar to Complainant�s mark was used to direct Internet users not to a site authorized by Complainant but to a competitor�s site. In these circumstances, users were likely to be confused as to the source, sponsorship, affiliation, or endorsement of the web site to which they were diverted.
Such allegations are not denied by Respondents. To the contrary, Respondents confirm them in important respects in Response Section 5(c) where they say that they "stopped using the domain name or having it directed to the respondent Nel-Tech�s Web site" immediately after they became aware of Complainant�s cease and desist letter.
The mode of use of the disputed domain name conforms to the circumstances described in Policy Section 4(b.)(iv). Hence, the Panel finds that the circumstances described in Section 4(b)(iv) were present in this case and constitute evidence of the registration and use of the disputed domain name in bad faith within the meaning of the Policy.
Although paragraph 5 of the Response contains general denials of bad faith on the part of Respondents, the context in which they are offered is not specified. Nor are facts presented in support of the denials.
The allegations that Respondents have already stopped their earlier practices which created a likelihood of confusion are similarly ineffective as a defense. They could change back to the old ways at their options as long as they continue to own and control the disputed domain name.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith within the meaning of Section 4(a)(iii) of the Policy.
Rights and Legitimate Interests
In evaluating whether, in the sense of Policy Section 4(a)(ii), Respondents have rights or legitimate interests in the disputed domain names, the Panel refers to Section 4(c) of the Policy. That section describes without limitation three circumstances which, if proved by the evidence, would demonstrate a respondent�s rights or legitimate interests for purposes of Section 4(a)(ii) of the Policy.
The Panel finds that none of the circumstances described in Policy Section 4(c) has been proved to exist in the present case. Respondents do not allege that they made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services at a time before they knew of the Complainant�s rights. Nor is there a showing that either Respondent has ever been known by the disputed domain name. Respondents� uses of the disputed domain name were commercial and diverted customers.
Taking into account all of the available evidence, the Panel finds that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
7. Decision
The Panel concludes (1) that the disputed domain name is confusingly similar to Complainant�s mark, (2) that Respondents have no rights or legitimate interests in the domain name, and (3) that Respondents registered and are using the domain name in bad faith.
Therefore, the Panel orders that the following domain name be transferred to Mackenzie Laboratories, Inc. of 1163 Nicole Court, Glendora, California 91740, U.S.A.: .
William L. Mathis
Sole Panelist
Dated: December 8, 2000
Full & Egal Universal Law Academy