Generic Top Level Domain Name (gTLD) Decisions

Kinko’s, Inc.
COMPLAINANT,

vs.

eToll, Inc. f/k/a E Corp
RESPONDENT.

DECISION
Forum File No: FA94447

 This is a domain dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (Policy) and Rules for Uniform Domain Name Dispute Resolution Policy (Rules). James A. Crary was selected as the sole panelist.

PROCEDURAL FINDINGS

Domain Name: kinkosoffice.com

Domain Name Registrar: Network Solutions

Date of Domain Name Registration: August 28, 1998

Date Administrative Proceeding Commenced: April 20, 2000

Date Response Due: May 10, 2000. (Response Filed May 9, 2000)

Relief Requested by Complainant: transfer of kinkosoffice.com to Complainant.

Relief Requested by Respondent: retention of the domain name kinkosoffice.com.

THE COMPLAINT

          Complainant has used its mark for approximately thirty years. KINKO’S became a registered mark with the U.S. Patent and Trademark Office December 27, 1994. The service mark is used in connection with Complainant’s business activities, which include rental of office machinery, photocopying, word processing, typing, compiling and preparing documents. The Complainant also owns the kinkos.com internet domain name. It has registered other trademarks including KINKO’S YOUR BRANCH OFFICE and YOUR BRANCH OFFICE.

          Respondent registered the domain name kinkosoffice.com, which is nearly identical to Complainant’s federally registered marks.

          The Complainant has used its KINKO’S marks substantially and continuously since 1970 and has spent a significant amount of money, time and effort, both on and off the internet promoting its name and mark. As a result, the Complainant has acquired goodwill in its KINKO’S name.

          Respondent registered kinkosoffice.com with Network Solutions on August 29, 1998. The domain name is not currently active.

          Complainant alleges that the administrative contact for the Respondent approached a representative of the Complainant and proposed a “mobile office concept” for use in connection with the kinkosoffice.com domain name. Complainant maintains that a mobile office concept was already in use by Complainant. Complainant was not interested in the proposal.

          According to the complaint, Respondent proposed the mobile office concept to Complainant in the effort to make a business deal with the Complainant wherein Complainant could use the disputed domain name upon payment by the Complainant to the Respondent for its services. Complainant was not interested in Respondent’s concept and informed Respondent of its trademark rights. Complainant requested that Respondent transfer the kinkosoffice.com domain name. Respondent refused.

          The Complainant maintained that Respondent was not authorized to register the disputed domain name. It was maintained that Respondent was well aware of the famous KINKO’S brand and attempted to capitalize on Complainant’s fame and wealth by taking something from Complainant, the kinkosoffice.com domain name in an effort to offer it back to the Complainant in exchange for a business deal. Complainant maintained that Respondent’s conduct was in bad faith as it had intentionally registered an infringing domain name for the purpose of selling, renting or otherwise transferring the domain name to the Complainant who is the owner of the KINKO’S marks for to profit in excess of its registration costs. The Complainant sought transfer of kinkosoffice.com to it by Respondent.

THE RESPONSE

          The Respondent asserted that it was irrelevant that kinkosoffice.com was identical or confusingly similar to the Complainant’s KINKO’S trademark. Respondent had not and would not make commercial use of the domain name without the express written consent of the Complainant.

It was denied that Respondent had no right or legitimate interest in the kinkosoffice.com domain name. The name was registered in connection with a mobile office technology proposal developed by Respondent for Complainant. Respondent was concerned that its mobile office technology could be utilized by Complainant without the Respondent being properly compensated. Complainant had refused to sign a non-disclosure agreement concerning Respondent’s mobile office concept.

Respondent further maintained that Complainant’s Exhibits contained no evidence supporting that it was already utilizing its own mobile office concept.

Respondent asserted that neither it nor any agent or employee associated with the Respondent attempted to benefit from the registration of Complainant’s “well known mark” by offering it back to the Complainant. Complainant had not supported this allegation with any proof.

The Respondent denied registering kinkosoffice.com in bad faith, rather it was the Complainant who acted in bad faith by attempting to utilize Respondent’s mobile office concept without adequately compensating Respondent. Respondent maintained further that it had not registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and further, that it had not engaged in a pattern of such conduct.

DISCUSSION

According to the Policy section 4(a), to be entitled to cancellation or transfer of a domain name, the Complainant must prove the disputed domain name:

(1) 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.

          The Complainant’s KINKO’S mark is an arbitrary term. The principle function of this arbitrary term is to identify Complainant as the source of product and services. The mark has substantial commercial value derived from this function. The principle value of KINKO’S lies in its role as a product identifier, not as a vehicle for conveying public information. The word “office” did not distinguish the mark. Complainant also owns the marks KINKO’S YOUR BRANCH OFFICE and YOUR BRANCH OFFICE. The domain name kinkosoffice.com was therefore concluded to be confusingly similar to Complainant’s registered marks.

Respondent’s assertion that the confusing similarity between the disputed domain name and the Complainant’s trademark is irrelevant is without merit. Respondent registered the disputed domain name without permission as a form of leverage to extract a business deal, which was not sought by Complainant. Respondents promise not to use the domain name is an empty promise when in fact Respondent in effect holds the domain name hostage.

The Panel concluded that Complainant proved the first element required to show abusive domain name registration.

          Respondent does not dispute Complainant’s ownership of the trademarks. According to Respondent’s Exhibit 1, the domain name kinkosoffice.com was registered in connection with a business proposal Respondent had developed and presented to Complainant.

          Neither the Complainant nor Respondent offered any particulars concerning the nature of their mobile office concepts.

          There was no evidence in the record, which would indicate that Respondent had any right or legitimate interest in respect to the domain name kinkosoffice.com other that it has registered the domain name. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no Complainant could succeed on a complaint of abusive registration. Construing the policy so as to avoid an illogical result, the Panel concludes that the mere registration does not establish rights or legitimate interests in the disputed domain name.

          There is no evidence of any legitimate use or preparation for use of the disputed domain name by Respondent.  Rather it appeared that the domain name was registered for the ultimate use of the Complainant. Therefore that the Complainant established the second element necessary to prevail on its claim of abusive domain name registration.

          Paragraph 4(b) sets forth circumstances “in particular but without limitation,” which if found by the Panel shall be evidence of registration and use of a domain name in bad faith. The circumstances included those indicating that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of a trademark or service mark…for valuable consideration in excess of documented out-of-pocket cost directly related to the domain name.” (Policy 4(b)(i)

          Respondent registered the domain name in connection with a business proposal it made to Complainant. The registration was performed without permission either expressed or implied from the Complainant. When Complainant declined the business proposal and asserted its trademark rights, Respondent refused to transfer the domain name since it feared Complainant was attempting to utilize Respondent’s mobile office technology without compensation to Respondent. It was concluded that the conduct of the Respondent fell within 4(b)(i) of the Policy. It was therefore concluded that Respondent registered and used the domain name kinkosoffice.com in bad faith, the final element necessary to be entitled to transfer of the domain name.

DECISION AND ORDER

It was concluded by the Panel that the domain name registered by Respondent is confusingly similar to the trademark and service marks in which the Complainant has rights and in which the Respondent has no rights or legitimate interests and that Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the domain name kinkosoffice.com be transferred to the Complainant.

Dated: May ­27, 2000                                    James Alan Crary, Arbitrator