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Generic Top Level Domain Name (gTLD) Decisions |
Tokheim Corporation v. CYBERTEXX
Claim Number: FA0112000103363
PARTIES
The Complainant is Tokheim
Corporation, Ft. Wayne, IN (“Complainant”)
represented by Randall Knuth.
The Respondent is CYBERTEXX, Auburn, IN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tokheim.net>,
registered with Network Solutions.
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.
R. Glen Ayers served as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint
to the National Arbitration Forum (“the Forum”)
electronically on December 21, 2001; the Forum received a hard copy of the
Complaint on December 26, 2001.
On December 27, 2001, Network
Solutions confirmed by e-mail to the Forum that the domain name <tokheim.net>
is registered with Network Solutions and that the Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions 5.0
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 December 31, 2001, a
Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of January 21, 2002 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@tokheim.net by e-mail.
A timely Response was received
and determined to be complete on January 15, 2002.
Respondent added to its Response
an additional paragraph, which was timely received and will be considered.
On February 7, 2002, pursuant to
Complainant’s request to have the dispute decided by a single-member
Panel, the Forum appointed R. Glen Ayers as Panelist.
RELIEF SOUGHT
The Complainant requests that the
domain name be transferred from the Respondent to the Complainant.
PARTIES’
CONTENTIONS
A. Complainant
Complainant, which holds a
registered Trademark, Tokheim, alleges that the mark is identical to the <tokheim.net>
domain name registered by Respondent if the addition of the “.net”
extension is ignored.
Complainant asserts that
Respondent should be considered as having no rights or legitimate interests in
respect to the domain name: “Before
any notice to the Respondent of the dispute, Respondent’s use of,
or demonstrable preparations to use, the domain name or a name corresponding to
the domain name is not in connection with
a bona fide offering of goods or services.” Complainant states that, at present, an
Internet user who enters the domain name into an Internet browser will access a
random advertisement,
displayed at the top of the web page, with the rest of
the web page being blank. However, the
Complainant alleges that in November of 2001, the domain name was pointing to
the <marconi.com> website.
Complainant states: “Marconi is a competitor of the Complainant.” Complainant attached an affidavit, but the
affidavit merely restates the allegations and does not describe the nature of
the business
of Marconi and how Marconi competes with the Complainant. Complainant also asserts that Respondent “is not
using the domain name in connection with a bona fide offering of goods or
services.”
Complainant asserts that
Respondent “has registered the domain name primarily for the purpose
of selling the domain name registration to the Complainant” – and
cites the email and other correspondence and an affidavit attached as exhibits
to the Complaint. Complainant asserts
that Respondent requested a “proposal to negotiate the transfer of the domain name.”
Complainant then requested a breakdown of the costs incurred by
Respondent. Complainant states that it
would have considered reimbursing Respondent in exchange for a transfer, but
that the Respondent offered
to transfer the domain name for $7,500.00.
Complainant asserts that it believes that “$7,500.00 is in excess of
Respondent’s documented out-of-pocket costs” – and, by
implication, that this request for $7500 is evidence of bad faith.
B. Respondent
Respondent admits that the mark
and domain name are “exactly the same ....” However, Respondent notes that Tokheim is not a unique name and
that other individual persons and entities use the name. It has presented evidence that shows that a
third party has some interest in the name.
Further, Respondent notes that Tokheim has registered <tokheim.com>.
Respondent asserts that it has
rights and legitimate interests in the domain name, alleging that it is in the
process of offering
web-based email to parties that may have interest in the
tokheim.net name server. Respondent has researched the surname, “Tokheim”, and
found individuals and businesses that could benefit by having the name for
email service, for example. Respondent asserts that
Complainant does not have
exclusive rights and interests the domain name. Respondent denies that it has caused confusion to Internet users
as described in the Complaint and denies that the page re-directed
a user to
any third party web address. If this
happened, says Respondent, it was without the direct action of the Respondent.
Respondent denies that there is
any evidence to support the allegation that it registered the domain name so as
to capitalize on Complainants’ trademark. Respondent registered the domain name in
1999. It asserts that it contacted
Complainant to resolve the matter after being notified by Complainant’s
counsel. “Respondent suggested that the Complainant proposes an
offer and that such would be considered in a timely manner. The Complainant
asked for a breakdown of costs incurred with owning the domain name. Respondent
suggested an amount to which the Complainant neither
accepted nor suggested a
counter offer.”
Respondent asserts that
Complainant first solicited Respondent; Respondent attached a copy of a voice
message left by Complainant. The
message, Respondent asserts, was left after Tokheim Corporation was notified of
the availability of the domain name in form of
a letter mailed to Tokheim
Corporation by Respondent in September 1999.
Respondent asserts that the letter did not imply that the domain name
was for sale. “Respondent never suggested to Complainant or it’s
representative that the domain name was for sale nor did it seek any
compensation in 1999 or 2000.” Respondent
asserts that it did not discuss
compensation until “it felt backed into a corner by Tokheim’s
representative and believed it had no other viable, amicable, efficient
alternative.” Respondent asserts that the evidence shows that Complainant
first engaged in efforts to buy the domain name.
FINDINGS
The domain name and the mark are
identical.
Respondent certainly has no
rights in the name, notwithstanding its protestations that there are other “tokheim’s” out
there somewhere.
The only issues are those of bad
faith. Respondent certainly registered
the name in 1999, and had no contact with the Complainant until it was
contacted by counsel for the
Complainant it late 2001. Further, Complainant clearly made the first
offer.
No evidence was offered that the
Respondent is in the business of registering and selling names.
Also, there is little or no
evidence of the other elements of bad faith.
The affidavit concerning Marconi offers no evidence of the nature of the
competition between Marconi and Complainant.
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;
(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.
Identical and/or Confusingly
Similar
The parties admit that the name
and mark are identical.
Rights or Legitimate Interests
Respondent offered no evidence of
rights or legitimate interest in the name.
Offering evidence that other persons might have some interest or right
is not sufficient.
Registration and Use in Bad Faith
However, there is little or no
evidence of bad faith. There is almost
no evidence of confusion of Internet users. See Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding Respondent acted in bad faith under Policy ¶
4(b)(iii) by attracting Internet
users to a website that competes with
Complainant’s business); see also EBAY, Inc. v. MEOdesigns &
Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that the Respondent
registered and used the domain name “eebay.com” in bad
faith where Respondent used the domain name to promote competing auction
sites); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb.
Forum May 14, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent
used the domain name, for commercial
gain, to intentionally attract users to a
direct competitor of Complainant); see also Identigene, Inc. v. Genetest
Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith under Policy ¶
4(b)(iv) where Respondent's use of the domain name to resolve
to a website
where similar services were offered was likely to confuse the user into
believing that Complainant was the source of
or was sponsoring the services
offered at the site).
Complainant’s
evidence on this issue is virtually non-existent.
Respondent asserts that it did
not register the disputed domain name with a bad faith intent to sell it, but
that it was actually
pressured by Complainant to negotiate. See Open Sys. Computing AS v. Alessandri,
D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was not acting in bad
faith by discussing a sale when Complainant initiated
an offer to purchase it
from Respondent); see also Mark Warner 2001 v. Larson, FA 95746 (Nat.
Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a
domain name is insufficient to amount to
bad faith under the Policy; the domain
name must be registered primarily for the purpose of selling it to the
owner of trademark for an amount in excess of out-of-pocket expenses); see
also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000)
(finding that “the mere offering [of a domain name for sale], without
more, does not indicate circumstances suggesting that Respondent registered
the
domain name primarily for the purpose of selling¼the domain name to the Complainant”).
Given the facts as presented by
Complainant, there can be no finding of bad faith.
DECISION
The domain name shall not be
transferred; the relief requested is denied.
Dated: February 19, 2002
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