Savin
Corporation and Ricoh Corporation v. Kent S. Schisler
Claim Number: FA0407000294206
PARTIES
Complainants are Savin Corporation and Ricoh Corporation (“Complainants”),
represented by David A. Einhorn, of Anderson Kill & Olick, P.C., 1251
Ave. of the Americas, New York, NY 10020.
Respondent is Kent S. Schisler (Respondent”),
P.O. Box 447, Herndon, VA 20172-0447.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain names at issue are <savinusa.com > and <ricohamerica.com >, registered
with Network Solutions, Inc.
PANEL
The undersigned certifies that he has
acted independently and impartially and to the best of his knowledge has no
known conflict in serving as Panelist in this proceeding.
Honorable Sir Ian Barker, Q.C.
PROCEDURAL
HISTORY
Complainants submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on July 8, 2004; the
Forum received a hard copy of the Complaint on July 12, 2004.
On July 9, 2004, Network Solutions, Inc. confirmed
by e-mail to the Forum that the domain names <savinusa.com > and
<ricohamerica.com > are registered with Network Solutions, Inc. and
that Respondent is the current registrant of the names. 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 July 16, 2004, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 5, 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@savinusa.com and postmaster@ricohamerica.com by e-mail.
A Response was received by the Forum in
hard copy on August 4, 2004. It was not
signed by the Respondent. He forwarded
an email to the Forum on August 6, 2004, which confirmed, but did not repeat,
the hard-copy Response: it made the necessary certifications. This document does not appear to bear a
signature. Additional Submissions were
received from the Complainants on August 9, 2004 and from the Respondent on
August 11, 2004.
On August 17, 2004, the Respondent
forwarded unsolicited further material for consideration by the Panel. The
information was not submitted in accordance with the rules and was not
considered by the Panel.
On August 13, 2004, pursuant to
Complainants’ request to have the dispute decided by a single-member Panel, the
Forum appointed the Honorable Sir Ian
Barker, QC as Panelist.
RELIEF SOUGHT
Complainants request that the domain names
be transferred from Respondent to Complainant.
FACTUAL MATTERS
The First Complainant, Savin Corporation
(“Savin”) owns numerous United States and foreign registrations for trademarks
for the mark ‘SAVIN.’ The marks are for a large range of office machines such
as photocopiers, facsimile machines and associated products.
The Second Complainant, Ricoh Corporation
(“Ricoh”) is the United States sales and marketing unit of a Japanese entity,
Ricoh Company Ltd (”RCL”), which holds numerous United States trademark
registrations for the mark ‘RICOH.’ The
Second Complainant is a licensee for those marks. The marks are in respect of a
wide variety of office equipment, associated products and supplies.
Savin and Ricoh are both subsidiaries of
RCL and distribute their products throughout the United States via a network of
authorized dealers and branches.
The Respondent is the CFO/General Manager
of the Madden Company (“Madden”) which had been an authorized dealer of Savin
products under a Dealer Agreement with Savin which expired on March 31, 2004
and which has not been renewed. The
terms of the Dealer Agreement are comprehensive and do not need to be repeated,
other than for the Panel to note the following:
In terms of the Dealer Agreement, upon
termination, Madden was inter alia
a) to “… discontinue
the use of Savin brand trademarks, trade names, labels and copyrights and
materials and signs bearing the name Savin or any trademark or trade name of
Savin, and will remove such names and trademarks from letterhead, stationery
and other forms used by the Dealer.”
… (to) “…
(b) to
discontinue immediately any use of Savin trademarks and service marks which, in
the sole judgment of Savin is unconnected with … the business advertising or
public relations policy of Savin or is misleading or confusing as to the rights
or status of Dealer …”.
Madden claims the current right under the
Dealer Agreement to sell off inventory and demonstration models to
Respondent. The Dealer Agreement refers
only to Savin products with no mention of Ricoh or its products.
Complainants sent Respondent, through
their lawyer, a ‘cease and desist’ letter on April 28, 2004. There was no response to that letter.
The disputed domain names were registered
by Respondent on April 5 and 6, 2004,
after the Dealer Agreement had been terminated.
PRELIMINARY
ISSUES
1.
The Respondent has not complied with ICANN Rule 5(a) and
Rule 3(b)(viii) in that he failed to send the Response to the Forum
electronically within the allotted time and he failed to sign the
Response. The Panel has decided to
consider his Response, despite these deficiencies. To rule the Response inadmissible for these reasons would be “… an extreme remedy not consistent with the
basic principles of due process.” See Strum v. Nordic Net
Exchange AB, FA 102843 (Nat. Arb. Forum February 21, 2002.) However, lack of a signature on the
hard-copy response and on the email certifications of the accuracy and veracity
of the Response, does go to the weight to be accorded to the document.
2.
The Panel has given thought as to whether this dispute is
outside the scope of the UDRP because of the reliance by Savin on Respondent’s
position under the Dealer Agreement between Savin and Madden. The Panel is
mindful that his role is not to adjudicate in a business dispute. However Respondent does not query the fact
that the Dealer Agreement was terminated by Savin. Nor does he dispute the clauses in the Agreement about the
effects of termination. Accordingly,
the Panel is justified in considering the terms of this Agreement to determine
whether Respondent can claim a bona fide interest
or right, sufficient for him to use the Complainant Savin’s trademarks in the
disputed domain names. Whether he is
entitled to use his website as he does, advertising the sale of goods
manufactured by Complainants, does not need to be decided by this Panel. The Agreement has no reference to
Complainant Ricoh.
3.
Respondent refers vaguely in his Response and Additional
Submission to civil and criminal proceedings which he has initiated. The Panel pays little attention to this
allegation because Respondent has neither supplied a certified copy of his
claim(s) as filed in a Court nor any official reference giving the name of the Court(s),
the date of filing and the record number.
Nor does he specify the prosecuting authority in the criminal
proceedings. Without such information,
the Panel is unable to assess whether the same matters traversed in the Court
proceedings are the same as those covered by the Complaint.
4.
The Panel considers that it is appropriate for these two
Complainants to seek transfers of domain names from the same Respondent. Both Complainants have an interest in both
disputed domain names as subsidiaries of RCL.
See Gruner and others v
Savior Baby, D2000-1741 (WIPO February 21, 2001) provides authority. Respondent did not submit otherwise.
PARTIES’
CONTENTIONS
A.
Complainants
General
As a licensee of the RICOH Marks, Ricoh
properly may seek transfer of the domain name <ricoamerica.com>. See FDNY Fire Safety Educ. Fund, Inc. v. Roger Miller, FA 145235 (Nat.
Arb. Forum Mar. 26, 2003).
Ricoh also may seek transfer of the
respondent’s domain name based on its common law rights in the mark RICOH. See Toyota Motor Sales, U.S.A., Inc., v. JT4WD’s, D2002-0392 (WIPO July
10, 2002) (permitting a US subsidiary of a Japanese parent that held all
relevant US trademark registrations to seek transfer of
<landcruiser.net>). In JT4WD’s, the registered trademarks were
held by the Japanese corporate parent.
However, Complainant, as the US importer and distributor for its
Japanese parent’s Toyota land cruisers, had used the mark LAND CRUISER in the
US since 1958. Based on this long use
of the mark and its history of substantial advertising, promotion and sales under
the mark, Complainant had standing to seek the domain name
<landcruiser.net>.
Ricoh uses the RICOH mark to import,
distribute and sell RCL products throughout the US. Over several decades, Ricoh has spent substantial sums in
advertising and promoting its goods and services under the RICOH mark. The company has annual sales in excess of
$2.8 billion.
Savin has registered its mark SAVIN as
the domain name <savin.com> and uses that domain name in
connection with a website. Similarly,
Ricoh has registered the domain name <ricoh-usa.com> and uses that domain
name in connection with a website.
Complainants use their respective
websites to market their products and service and to promote the goodwill
associated with their brand names.
Respondent has represented that he is the
CFO/General Manager of The Madden Company (“Madden”), a former authorized
dealer of Savin products. On March 31,
2004, Madden’s dealer agreement expired.
That agreement had permitted Madden a limited license to use the Savin
marks but not those of Ricoh. The
Dealer Agreement was neither renewed nor extended. The terms of the Dealer Agreement (quoted earlier) state that,
upon expiration, Madden shall cease all use of the Savin marks.
Respondent currently uses the domain
names with websites that offer Savin and Ricoh products for sale. Respondent offers these products in
competition with Savin and Ricoh authorized dealers. The pages from his websites show that he uses those websites, at
domains using Complainants’ marks in order to divert customers away from
authorized dealers. The site at <savinusa.com>
states that “SAVIN USA Copiers, Printers
& Fax” sells “genuine SAVIN
equipment” and “the best part about
dealing with us is that you don’t have to pay Authorized Dealer prices!” Similarly, the <ricohamerica.com>
site states that “RICOH America –
Copiers, Printers & Fax” sells “new ‘demo’ equipment” for thousands less
than an Authorized Dealer.”
Confusingly Similar
The disputed domain name <savinusa.com>
is confusingly similar to Savin’s registered trademarks. Savin holds valid and subsisting federal
trademark registrations for ‘Savin’ in the United States. Savin first registered its SAVIN mark in 1967.
Similarly, the disputed domain name <ricohamerica.com>
is confusingly similar to the Ricoh Marks.
Since 1962, Ricoh has used the mark RICOH as licensee for RCL’s
registered RICOH Marks. The use has
been shown through its own importation, distribution and sale of goods and
through its dealership network in the US.
A domain name need not be identical to a
complainant’s mark in order to be confusingly similar. See Savin Corp. v. Mowbray, FA 103869 (Nat. Arb. Forum March 1, 2002)
(finding <savincity.com> to be confusingly similar to SAVIN). A domain name that contains the identical
mark of the Complainant is confusingly similar to the Complainant’s mark even
if the entire domain name is not identical to the mark. Only essential identity is needed to
establish confusingly similarity.
Use of the complainant’s trademark in
connection with a general term does not avoid the confusing similarity created
by the use of the complainant’s trademark.
See Savin Corp. v. Copier
Dealers, Inc., FA 155903 (Nat. Arb. Forum July 9, 2003).
Placing a geographic term next to the
complainant’s mark in a domain name does not serve to distinguish it from that
mark. See Neusiedler
Aktiengessellschaft v. Kulkarni, D2000-1769 (WIPO Feb. 5, 2001) (holding
that the addition of the initials “usa” did not distinguish the domain name
<lipostabilusa.com> from the mark LIPOSTABIL). See also Broadcom Corp. v. Ayers Int’l Group, Inc., FA 112562 (Nat. Arb. Forum July
24, 2002) and Smith & Fong Co., Inc.
v. Plyboo Am. Inc., FA
156804 (Nat. Arb. Forum June 10, 2003).
Bona Fide Use or Legitimate Interest
Registering a domain name containing a
competitors’ mark for use in competing with the mark owner does not constitute
a bona fide use. See Clear Channel Commun., Inc. v. Beaty Enters., FA 135008 (Nat. Arb.
Forum Jan. 2, 2003).
Respondent’s employment with a former
authorized dealer of Savin products does not afford him any rights in the Savin
Marks (nor the Ricoh Marks) See Magnum
Piering, Inc. v. The Mudjackers,
D2000-1525 (WIPO Jan. 29, 2001) (holding that even where dealer registered
several domain names prior to termination of the dealer agreement, the former
dealer lacked a legitimate interest in the domain names as they had been
registered without authorization from the trademark holder); see also Hydraroll Ltd v. Morgan Corp., FA 94108
(Nat. Arb. Forum Apr. 14, 2001) (holding the same where the dealer registered
the domain name amidst a dispute over whether its dealership agreement was
terminated properly); see also Sagmel, Inc. v. Kortest Co., Ltd, FA
97359 (Nat. Arb. Forum July 3, 2001) (stating that panels consistently transfer
domain names from dealers back to trademark owners where the domain name
incorporates the owner’s trademark).
Respondent did not register the domain
names at issue until after Madden ceased being an authorized Savin dealer. He must have registered the domain names
using the SAVIN and RICOH Marks with full knowledge of Savin’s and Ricoh’s
rights in those marks and with full knowledge that he had no right to use those
marks. He currently uses those domain
names for websites that sell products that compete with Savin and Ricoh
authorized dealers.
Respondent’s use of domain names that are
highly similar to Complainants’ trademarks with the intent and result of
diverting users from Complainants to Respondent, does not establish a bona fide commercial use. Savin
Corp. v. Mowbray, supra; Backstage
Fashion, Inc. v. Back Stage, Inc., FA 100135 (Nat. Arb. Forum Nov. 5, 2001)
(“Using a domain name identical to Complainant’s service mark with the result
of diverting potential customers from Complainant to Respondent is not a bona
fide offering of goods.”). See also
Gorstew Limited v. Regency Travel, FA
94921 (Nat. Arb. Forum July 6, 2000).
In this case, Respondent’s current use of
the domain names at issue is an effort to divert consumers of business
machinery away from Complainants and their authorized dealers and to
itself. This type of use cannot
constitute a legitimate interest under UDRP ¶4(a)(ii). It is a bad faith use of the domain names
under UDRP ¶ 4(b)(iii) & (iv).
Respondent claims to use the marks SAVIN
and RICOH to sell Savin and Ricoh office machinery and products Neither Respondent nor Madden was an
authorized dealer of Savin or Ricoh products at the time Respondent registered
the domain names at issue. As in Gorstew, Respondent’s sale of Savin and
Ricoh products, under domain names confusingly similar to the SAVIN and RICOH
marks, does not establish a legitimate interest in those domain names.
Respondent’s use of its domain names is
neither legitimate noncommercial use nor a fair use. In Savin v. Rayne, the
court stated that use by another of the Savin Marks for Websites would only be
legitimate if the sites were used solely for consumer education and commentary,
and not for an commercial purpose. (Savin
v. Rayne, 2001 U.S. Dist. Lexis 20581 at 24). Respondent’s use, however, is clearly commercial in nature.
Bad Faith
Respondent is not an authorized dealer of
SAVIN or RICOH products. Any right to
use the SAVIN Mark that he could have claimed through Madden has expired. Neither
he nor Madden ever had any right to use the RICOH Marks. His subsequent registration of the domain
names at issue reflects his bad faith intent to pass-off himself or his
business as affiliated with Savin and Ricoh.
He uses the domain names to attract customers of Savin and Ricoh
products to his business’ website for commercial gain. This use is neither legitimate or in good
faith.
Respondent has expressed his intent to
compete with Savin’s and Ricoh’s authorized dealers. His intent is to use these Websites to divert customers away from
the Complainants and their authorized dealers.
Respondent, as a former Savin dealer, was well aware of the SAVIN and
RICOH Marks. He nonetheless
intentionally selected domain names confusingly similar to those marks. The decision further evidences his intent to
trade on the goodwill that consumers recognize the SAVIN and RICOH marks to
represent.
B.
Respondent’s Submissions
In his Response, Respondent claimed that
Complainants were taking retaliatory action because he had established a
website, <www.thisisjustice.com>,
critical of Complainants. Respondent denies that the disputed domain names are
confusingly similar to Complainants’ marks and claims that most domain name
dispute decisions have been against persons wishing to sell a disputed name for
profit. Respondent is not in that category.
The sites were established to provide
service to customers wanting to buy ‘demo’ and used Savin and Ricoh equipment.
Respondent is not in competition with Complainants, since they sell new
equipment only, which Respondent does not.
Respondent is not using Complainants’
marks nor does he express or imply in the website that he is in any way
connected with the Complainants or is an authorized dealer. Respondent is no
longer limited to a sales territory and can sell and service Savin and Ricoh
equipment anywhere in the world. Respondent does not use Complainants’ logos
and specifically states that he will refer visitors to authorized dealers. Respondent is entitled to sell Savin and
Ricoh equipment, legitimately purchased when Madden was an authorized dealer.
Respondent seeks a finding of reverse
domain name hijacking under Rule 15(e), claiming that Complainants have used
the Policy in bad faith to deprive him of the disputed domain names to which he
has rights.
The fact that his company was an
authorized Savin dealer for 25 years gives him the right to continue to sell
equipment legitimately purchased.
C. Parties’ Additional Submissions
The parties’ additional submissions added
little to their earlier pleadings.
Complainant submitted, inter alia:
(a)
Respondent admitted registering the disputed domain names to
divert customers looking for Ricoh and Savin equipment and that Respondent was
selling these products through the domain names.
(b)
Respondent admitted that it had now no relationship with
Complainants.
(c)
Respondent’s disclaimer in the text of his website does not
excuse its use of Complainants’ marks nor Respondent’s bad faith registration
and use of the names. See State Bar of California v.
eWebNational.com.Inc, FA 97137 (Nat. Arb. Forum June 14, 2001).
(d)
Any right of the Respondent to sell off inventory products
does not give him the right to register confusingly similar domain names. See express Serv. Inc. v Personnel Plus, FA 112624, (Nat. Arb. Forum
June 20, 2002).
(e)
Bad faith by Respondent is shown by his admission that he
registered the domain names and created the websites after Madden’s dealership
had been terminated.
(f)
Respondent admitted he never hand any dealership or dealings
with Ricoh.
Respondent
noted that each website has a statement at the top in red “READ THIS FIRST”
which is followed by statements to the effect:
(a) These
are not the websites of Savin or Ricoh;
(b) Savin
and Ricoh do not endorse the website;
(c) Respondent
sells only ‘demo’ and used Savin and Ricoh equipment.
The
termination of the longstanding dealership should be taken into account by the
Panel.
Respondent
denied bad faith and unauthorized use of Complainants’ trademarks. Savin and Ricoh are still obliged to provide
parts to a former dealer. Untrue claims
are being made by authorized dealers in the area about Respondent’s
business.
Respondent
relied on an NAF decision about the domain name <savinsucks.com>. Savin Corporation v savinsucks.com, FA
103982, (Nat. Arb. Forum March 5, 2002).
DISCUSSION
Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights; and
(2) the 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 Savin
has established rights in the SAVIN mark because of its registrations with the
USPTO. Complainant Ricoh is the
licensee from the owner of the RICOH mark also registered with the USPTO. Registration of a mark is prima facie evidence of validity.
The <savinusa.com> domain
name is confusingly similar to Complainant Savin’s SAVIN mark because the
domain name fully incorporates the mark and merely adds the generic, geographic
term “usa.” See Oki Data Ams. Inc. v. ASD, Inc., D2001-0903
(WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a
Complainant’s registered mark is sufficient to establish identity or
confusingly similarity for purposes of the Policy despite the addition of other
words to such marks.”); see also Net2phone
Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) and JVC Am. Corp. v. Cacafee, CPR007 (CPR
Nov. 10, 2000) (finding that the domain name registered by Respondent,
<jvc-amercial.com>, is substantially similar to, and nearly identical to
Complainant’s JVC mark).
The <ricohamerica.com> domain
name is confusingly similar to the RICOH mark in which the Complainant Ricoh
has rights as licensee, because the domain name fully incorporates the mark and
merely adds the generic geographical term “America.” See AXA China Region Ltd.
v. KANNET Ltd, D2000-1377 (WIPO Nov. 29, 2000) (finding that common
geographic qualifiers or generic nouns can rarely be relied upon to
differentiate the mark if the other elements of the domain name comprise a mark
or marks in which another party has rights); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO
Aug. 8, 2000) (finding that the domain name <cmgiasia.com> was
confusingly similar to Complainant’s CMGI mark).
The confusingly similarity of
Complainant’s SAVIN and RICOH marks and the disputed domain names is heightened
because both Respondent and Complainants are in the same industry, i.e. the
provision of business machinery and parts and services, including photocopiers,
printers and facsimile machines. See
Slep-Tone Entm’t Corp. v. Sound Choice
Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (“likelihood
of confusion is further increased by the fact that the Respondent and
[Complainant] operate within the same industry.”).
The disputed domain
names take advantage of the goodwill associated with Complainants’ SAVIN and
RICOH marks and therefore the use of the disputed domain name does not
constitute a bona fide offering of
goods or service pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent lacks
rights and legitimate interests because the domain names resolve to commercial
websites that take advantage of the goodwill associated with Complainants’
marks. See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using Complainant’s mark by redirecting internet
traffic to its own website; see also Avery
Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding
that Respondent had no rights or legitimate interests in the disputed domain
name where it used Complainant’s mark, without authorization, to attract
internet users to its business, which competed with Complainant); see also
Chip Merch., Inc. v Blue Star Elec.,
D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were
confusingly similar to Complainant’s mark and that Respondent’s use of the
domain names to sell competing goods was illegitimate and not a bona fide offering of goods).
Respondent is not
commonly known by the <savinusa.com> and <ricohamerica.com>
domain names and therefore lacks rights and legitimate interests in the domain
names pursuant to Policy ¶ 4(c)(i).
Respondent’s status
as a former employee of a former authorized dealer of Complainant’s SAVIN
products provides Respondent no rights and legitimate interests in the domain
names pursuant to Policy ¶ 4(c)(i).
See Vinidex Pty. Ltd. v.
Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that as a former
employee, Respondent knew or should have known Complainant’s mark was in use as
an integral part of the corporate name and as a trademark and that Respondent
understood the legitimate interests and rights of Complainant and, by contrast,
its own lack of interests or rights. This
is sufficient for Complainant to establish that Respondent had no rights or
interests in the domain name).
The essential
fallacy in Respondent’s position is that, whatever right he may or may not have
as a former Savin dealer to sell off inventory stock acquired during Madden’s
dealership, he does not have the right to use Complainants’ marks in domain
names which suggest an affiliation with or an endorsement from
Complainants. No other inference can be
drawn from domain names which incorporate their registered marks plus a wide
geographical expression such as ‘usa’ or ‘america.’
Two WIPO decisions
exemplify this proposition. They are
also relevant under bad faith considerations.
In General Electric Company v Japan Inc., D2001-0410 (WIPO June 26,
2001) an experienced three-member panel held that a reseller of used GE power
generation equipment could not use the domain name <japan-ge.com>. The
panel acknowledged substantial judicial authority that suggests “fair use”
rights for a reseller of used equipment which is the subject of a
trademark. However, this right is
carefully bounded by the requirement that the reseller may not use the mark in
a way that is likely to confuse consumers as to an affiliation between the
retailer and trademark owner. The Panel followed Caterpillar Inc v Quin,
D2000-0314 (WIPO June 14, 2000) where it was held that those seeking spare
parts for Caterpillar equipment, would enter the site
<caterpillarparts.com> expecting to encounter Caterpillar Inc or one of
its authorized dealers and not a retailer trading in Caterpillar spare parts.
To similar effect
is RT. Quaife Engineering Ltd. v. Luton,
D2000-1201 (WIPO Nov. 23, 2000) where
Respondent registered <quaifeusa.com> after he had had disagreements with
the holder of the registered trademark, Quaife. Like the Panelists in the General Electric case, the Panelists in Quaife had no hesitation in holding that
the rights of the Respondent as a retailer of equipment gave him no rights to
register a domain name which suggested a US affiliation with the UK firm of
Quaife. The parallels with the present
case are clear.
In respect of
Respondent’s use of the RICOH mark in the disputed domain name <ricohamerica.com>,
there is not even a vestige of plausibility, since Madden had no Dealer
Agreement with Ricoh.
Registration and
Use in Bad Faith Policy ¶ 4(c)(i)
The Panel accepts
that Respondent’s use of the domain names is an attempt to pass himself off as
Complainants to sell used office equipment.
This is bad faith registration and use of the domain name pursuant to
Policy s 4(c)(i). See Monsanto Co. v. Deceptions, FA 101536
(Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent’s use of
<monsantos.com> to misrepresent itself as Complainant and to provide
misleading information to the public supported a finding of bad faith); see
also DaimlerChrysler Corp. v.
Bergman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of
the title “Dodgeviper.com Official Home Page” gave consumers the impression
that Complainant endorsed and sponsored Respondent’s website).
Complainant further
asserts that Respondent is using the <savinusa.com> and <ricohamerica.com>
domain names to divert internet users, searching under Complainants’ SAVIN and
RICOH marks, to his own commercial websites, where Respondent sells
Complainants’ goods for his own commercial gain. See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that Respondent registered and used the domain name in bad faith
because Respondent was using the confusingly similar domain name to attract
internet users to its commercial website); see also Am. Online, Inc., v. Tencent Commun. Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract users to a website sponsored by Respondent); see
also Fossil Inc. v. NAS, FA 92525
(Nat. Arb. Forum Feb., 23, 2000) (finding that Respondent acted in bad faith by
registering the <fossilwatch.com> domain name and using it to sell
various watch brands where Respondent was not authorized to sell Complainant’s
goods).
The Panel does not need to enquire
into the right of Respondent to sell Complainant Savin’s used merchandise. Presumably, that is for the Courts to
decide. It is not the use of the words ‘Savin’ and ‘Ricoh’ on the website with
which the Panel is concerned. It is
Respondent’s use of disputed domain names which clearly imply a close
affiliation between the trademark holders and the holder of the domain name.
Nor can the disclaimer by Respondent in
the website that he is not an authorized dealer of Complainants assist
Respondent’s case. The damage to
Complainant’s marks lies in the existence of the disputed domain names which
are capable of being accessed by persons wishing to make some enquiry
concerning Complainants. Such persons
could easily access Respondent’s websites.
See Comcast Corp. v. Comcast
Broadband LLP.,
FA 9976 (Nat. Arb. Forum October 29, 2001). The State Bar of California
decision, cited above, made the essential point, i.e. that merely placing
language on the website to disclaim association with another entity does not
solve the confusion caused by the domain name itself which will continue to
attract web users. This initial
confusion is the basis for finding a violation of the Complainant’s rights. See
Am. Online Inc v. Griffin, FA 102745 (Nat. Arb. Forum January 22, 2002).
Nor can the <savinsucks.com>
decision assist Respondent. In this
case Respondent appeared to want to establish a website critical of Savin. The Panel was unable to find bad faith. In particular, it found no evidence that (a)
the primary purpose of registration was to disrupt the business of the
Complainant; (b) the Complainant and the Respondent were competitors; (c) the
Respondent intended for commercial gain to attract internet users to the site
which was inoperative.
It is this last finding that most
strongly distinguishes the present case.
Respondent’s disputed domain names must attract internet users to the
websites for commercial gain.
Reverse Domain Name Hijacking
Respondent’s claim of reverse domain-name
hijacking was made without any evidence.
No authorities were cited in support of it. The Panel finds that claim without foundation and dismisses it.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <savinusa.com>
and <ricohamerica.com> domain names be TRANSFERRED from Respondent to the respective complainants.
Respondent’s claim of reverse domain name
hijacking is dismissed.
Hon. Sir Ian
Barker, QC Panelist
Dated: August 25, 2004
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