WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Robotel Electronique Inc. v. KapCom, Inc.
Case No. D2001-0038
1. The Parties
The Complainant is Robotel Electronique Inc., 3421 Industriel Boulevard, Laval, Quebec H7L 4S3 Canada.
The Respondent is KapCom, Inc., 2031 North Bay Road, Miami Beach, FL 33140, United States of America. Administrative and billing contact for the domain name: Allen D. Kaplan, DigiTel USA, Inc., 2031 North Bay Road, Miami Beach, FL 33140, United States of America.
2. The Domain Name and Registrar
The domain name in issue is (hereafter "the domain name").
The domain name was registered with Network Solutions, Inc., 505 Huntmar Park Drive, Herndon VA 20170, United States of America.
The domain name was registered in July 1996.
3. Procedural History
(1) The Complaint in Case No. D2001-0038 was filed in email form on January 8, 2001, and in hardcopy on January 11, 2001.
(2) The WIPO Arbitration and Mediation Center (hereafter "the Center") has found that:
- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- Payment for filing was properly made;
- The Complaint complies with the formal requirements;
- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- A Response to the Complaint was not filed;
- The Respondent was appropriately served with a Notice of Default; and that
- The Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) There have been neither further submissions nor communications from the Complainants and Respondent, or their representatives, after the appointment of the Panel.
(5) The date scheduled for issuance of a decision is February 26, 2001.
(6) No extensions have been granted or orders issued in advance of this decision.
(7) The language of the proceeding is English.
4. Factual Background
A. The Complainant and its marks
The Complainant, Robotel Electronique Inc., is a Canadian-based manufacturer of computer hardware and software products. It has been using the mark ROBOTEL, since August 1984, and in the United States since May of 1988, in the area of computer hardware and software, including telecommunication-connected facsimile transmission encryption, and systems to facilitate computer based teaching and distance learning.
The Complainant is the proprietor of a United States trademark registration (Reg. no. 1,970,747), for the word mark ROBOTEL, issued on April 30, 1996. This registration is for "personal computers, monitors, modems, keyboards, and computer peripherals; computer software for educational classroom management and educational testing; security encryptors to encode facsimile messages".
B. The Respondent
According to the Whois databases of Network Solutions and Internic, the Respondent in this administrative proceeding is KapCom, Inc., 2031 North Bay Road, Miami Beach, FL 33140. Network Solutions, Inc., verified this information in a communication to the Center on January 12, 2001.
No Response was filed and so no further information is known about the Respondent.
C. Registration, Use, and Negotiations in Relation to the Domain Name
The domain name was registered in July of 1996 in the name of an entity referring to itself as KapCom, Inc. The Complainant thereafter contacted the owner of the domain name in order to discuss transfer of the domain name registration to the Complainant. On September 13, 1996, the apparent owner of the registration, Mr. Allen Kaplan, wrote to the Complainant. In this correspondence, he offered not to use the name ROBOTEL if he received $50,000, and that he would transfer the domain name registration to the Complainant for $10,000. In a later conversation in April of 1997 between Mr. Kaplan and the Complainant�s attorneys, Mr. Kaplan stated that he was willing to accept $15,000 in return for transferring the domain name registration. The Complainant did not agree to these offers.
In 1996 Mr. Kaplan incorporated under the name Robotel Inc., in Florida, USA. That incorporation lapsed a year later in 1997. There is no evidence of any effort to remedy the lapsed incorporation in the state of Florida.
In April 1997, the Complainant supplied a certified copy of its United States trademark registration to Network Solutions, Inc., who, in accordance with the dispute policy in effect at that time, placed the domain name on hold. The hold placed on the domain was removed in May, 2000. The domain name registration has been renewed, most recently in 2000. The current registration is now set to expire in July 2001.
The domain name has never resolved to any active web site.
5. Parties� Contentions
A. The Complainants� assertions
The Respondent's domain name is identical to the Complainant�s mark.
The Respondent has no legitimate interest or rights in the domain names. The Complainant asserts:
(1) The domain name has never been used to host a web site that made a bona fide offering of goods or services, before the domain was placed on hold.
(2) The Respondent has no legitimate rights in the mark ROBOTEL stemming from use of the mark in commerce.
The Respondent registered the domain name and is using it in bad faith. The Complainant asserts:
(1) The United States Trademark Act states that a certificate of Registration shall be, "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration". Section 22 of the United States Trademark Act states that registration of a mark on the Principal Register shall be "constructive notice of the registrant�s claim of ownership". The Respondent in this matter had notice of the Complainants mark and as such should be deemed to have registered in bad faith.
(2) Respondent has engaged in bad faith use of the domain name.
(3) The Respondent demanded $10,000-$15,000 in order to transfer the domain name to the Respondent. These amounts clearly evidence an intent to profit from the value built up in the ROBOTEL mark by the Complainant over the course of many years and constitute bad faith use of the domain name.
Accordingly the Panel should order that the domain names be transferred to the Complainant.
B. The Respondent�s assertions
The Respondent has not filed a Response.
6. Discussion and Findings
Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and
B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
C. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar.
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
The Complainant has provided evidence of US registration for its ROBOTEL mark. I conclude that the Complainant � as registered proprietor of the mark ROBOTEL � has established the first requirement of this paragraph.
The second requirement is that the domain name be identical or confusingly similar to the marks. Here the Complainant simply asserts that the domain name is identical to its mark. This is, obviously, correct. We have long since passed the point where it is necessary to discuss the issue of whether the addition of to the mark renders the domain name somehow different. It does not. The domain name is identical to the mark.
The Complainant has shown that it has rights in a trade mark, and that the domain name is identical to this mark. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.
B. The Respondent has no rights or legitimate interest in respect of the domain name.
The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point:
(1) The domain name has never been used to host a web site that made a bona fide offering of goods or services, before the domain was placed on hold.
(2) The Respondent has no legitimate rights in the mark ROBOTEL stemming from use of the mark in commerce.
These Complainant�s assertions deal with some, though not all, of the issues expressed in Paragraph 4.c. of the UDRP. In the absence of a Response, I consider it necessary to analyse whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:
"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
Considering Paragraph 4.c.(i): could the Respondent demonstrate its legitimate interest or rights by preparations to use the name in a bona fide offering of services? There is no evidence that the Respondent has ever used the name in a bona fide offering of services. The Respondent might argue that the domain name was put on hold, and so it has not had the opportunity to use the domain name for such a bona fide use. However there is evidence that whenever the domain name has not been on hold � from July 1996 to
April 1997, and since May 2000 � the Respondent has not undertaken any bona fide use, nor even troubled to delegate the domain name to resolve to any web site. I conclude that Paragraph 4.c.(i) does not apply.
Considering Paragraph 4.c.(ii): could the Respondent demonstrate its legitimate interest or rights by a demonstration that it has been commonly known by the domain name, even without trade or service mark rights? The only evidence for this is the Florida company registration of 1996. However, this registration occurred around the same time as the registration of the domain name, and lapsed shortly thereafter, never to be registered again. It is apparent that the company registration was undertaken with male fides, in order to support a claim for the domain name. I do not consider this to be evidence of legitimate interest or rights in the domain name. I conclude that Paragraph 4.c.(ii) does not apply.
Considering Paragraph 4.c.(iii): has the Respondent engaged in fair or non-commercial legitimate use? As for the discussion above in relation to Paragraph 4(c)(i), there is simply no evidence of this. Therefore, I conclude that Paragraph 4.c.(iii) does not apply
As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.
C. The Respondent registered and is using the domain name in bad faith.
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
The Complainant makes the following arguments:
(1) The United States Trademark Act states that a certificate of Registration shall be, "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration". Section 22 of the United States Trademark Act states that registration of a mark on the Principal Register shall be "constructive notice of the registrant�s claim of ownership". The Respondent in this matter had notice of the Complainants mark and as such should be deemed to have registered in bad faith.
(2) Respondent has also engaged in bad faith use of the domain name.
(3) The Respondent demanded $10,000-$15,000 in order to transfer the domain name to the Respondent. These amounts clearly evidence an intent to profit from the value built up in the ROBOTEL mark by the Complainant over the course of many years and constitute bad faith use of the domain name.
I do not wish to ignore the Complainant�s arguments, but in the interests of parsimony I can resolve this matter based upon its third argument. This argument relies on the terms of Paragraph 4.b.(i) of the UDRP. Paragraph 4.b.(i) sets out one of the circumstances evidencing bad faith registration and use: evidence that the Respondent acquired the domain name primarily for the purpose of selling, renting, or transferring the domain name to the trade mark owning Complainant. The evidence here is that the Respondent has offered to transfer the domain name to the Complainant, for sums between $10,000 and $15,000. It is clear that this is sufficient evidence of bad faith registration and use, pursuant to Paragraph 4.b. and the myriad of Administrative Panel proceedings that have similarly found.
I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.
7. Decision
The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.
Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.
I hereby order that the domain name be transferred forthwith to the Complainant.
Dan Hunter
Sole Panelist
Dated: February 26, 2001
Full & Egal Universal Law Academy