Ricom, Inc. v. Ricom
Claim
Number: FA0410000348012
Complainant is Ricom, Inc. (“Complainant”), represented
by Gregory J. Marcot, of Kring & Chung,
38 Corporate Park, Irvine, CA 92623-9782.
Respondent is Ricom (“Respondent”), 31808 Kennet Street, Hayward,
CA 94544.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ricom.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
20, 2004; the National Arbitration Forum received a hard copy of the Complaint
on October 25, 2004.
On
October 22, 2004, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <ricom.com> is registered
with Network Solutions, Inc. and that Respondent is the current registrant of
the name. Network Solutions, Inc. has verified that Respondent is bound by the Network
Solutions, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
October 29, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 18, 2004 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@ricom.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 2, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ricom.com>
domain name is identical to Complainant’s RICOM mark.
2. Respondent does not have any rights or
legitimate interests in the <ricom.com> domain name.
3. Respondent registered and used the <ricom.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
been conducting business under the business name “Ricom” since August
1997. In May 1998, Complainant formally
registered the domain name <ricom.net> and has been operating a website
through this domain name ever since. In
February 2003, Complainant filed a service mark registration application with
the United States Patent and Trademark Office (“USPTO”) for its mark RICOM;
however, Complainant allowed the application to lapse and it was deemed
abandoned by the USPTO in March 2004.
Respondent
registered the <ricom.com> domain name on April 26, 1997, before
Complainant even existed as a business entity.
The domain name resolves to a website displaying nothing but the term
“ricom.com” in bold letters.
Complainant has previously offered to purchase the disputed domain name
from Respondent for $5,000. Respondent
rejected this offer, but has offered to sell the disputed domain name for no
less than $20,000.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Respondent’s
registration of the disputed domain name predates any use of the RICOM mark by
Complainant by several months. Thus,
the Panel holds that Complainant has not shown sufficient rights to bring a
claim pursuant to Policy ¶ 4(a)(i) because Complainant’s initial use of the
mark does not predate Respondent’s registration of the disputed domain
name. See Intermark Media, Inc. v. Wang Logic Corp., FA 139660
(Nat. Arb. Forum Feb. 19, 2003) finding that any enforceable interest that
Complainant may have in its common law mark did not predate Respondent’s domain
name registration, therefore finding that Policy ¶ 4(a)(i) had not been
satisfied; see also Phoenix
Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) finding
that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate
Respondent’s registration of the domain name”.
Since
Complainant failed to establish standing pursuant to paragraph 4(a)(i) of the
Policy, it is unnecessary to address paragraphs 4(a)(ii) and (iii) of the
Policy. See Creative Curb v. Edgetec
International Pty. Ltd.,
FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because Complainant
must prove all three elements under the Policy, Complainant's failure to prove
one of the elements makes further inquiry into the remaining element
unnecessary.
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that the petition for relief shall be DENIED without prejudice
to refiling.
Sandra Franklin, Panelist
Dated:
December 16, 2004
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