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Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Netsymmetrics [2005] GENDND 486 (13 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lantek Communications, Inc. v. Jae Wan, Lee

Case No. D2004-1020

1. The Parties

The Complainant is Lantek Communications, Inc. of Grand Prairie, Texas, United States of America, represented by Hamilton Peck, the Complainant’s Vice President, of Grand Prairie.

The Respondent is Jae Wan, Lee of GwangJu, Seo-Gu, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <lantek.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2004. On December 3, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On December 6, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 13, 2004. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2005.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on February 11, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The sole communication from the Respondent was a request that the proceedings might be conducted in the Korean language. The Center notified the Respondent that the Rules militated that the proceedings be in English, subject to agreement between the parties to the contrary. Since the parties have not produced such agreement, the Panel will in line with paragraph 11 of the Rules proceed with English as the language of proceedings.

After initial consideration of the Complaint by the Panel, a Procedural Order was issued on February 23, 2005, under the provisions of Rules 10(a) and 12, inviting the Complainant by March 4 to supplement its Complaint by providing the Panel with:

1. A representation of the mark the subject of Texan trade mark registration number 800324137;

2. Evidence of the extent of the common law usage of that mark;

3. Confirmation that the email exchange with the Respondent supplied with the Complaint constituted the entire dialogue with the Respondent.

The Complainant responded to that invitation and the Respondent was given until March 11, 2005, to submit a reply to that new material. No reply was made.

4. Factual Background

The Complainant alleges that it is a well known provider of communications cabling installation, together with other goods and services incidental thereto. Since its inception, the Complainant has offered those goods and services to the public under the trade mark LANTEK COMMUNICATIONS INC. & Design. That mark is the subject of a Texas State trade mark registration no. 800324137 valid until May 28, 2014.

The Respondent registered the disputed domain name on October 2, 2001. The nature of the Respondent’s business, if any, is uncertain, although for a time a rudimentary website existed at “www.lantek.com” which amongst other things indicated that the domain name might be available for sale.

On January 5, 2004, in response to that invitation, the Complainant wrote to the Respondent thus: We would like to submit a bid for $1,400 for ownership rights to the “www.lantek.com” domain name. Thank you. On the following day, the Respondent replied: Thanks for your interested (sic.) in our domain name. But it is USD3,000.

Correspondence ended there and, as stated above, in December of that same year the Complaint was filed.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the domain name is identical or confusingly similar to its trade mark, that the Respondent has no rights or legitimate interests in the domain name, and that it both registered and used the domain name in bad faith. The Complainant further asserts that the Respondent has not used the domain name in connection with a bona fide offering of goods or services, nor has it been commonly known by the name LANTEK.

The Complainant contends that the Respondent registered the domain name primarily for the purpose of selling or renting the name to the Complainant for an amount in excess of its out of pocket registration costs and the Respondent’s only intention was to “squat on the name” with a view to extracting the maximum sum from the Complainant. The Complaint also says that the Respondent’s sole intention in registering the name was to sell it on to the highest bidder.

As evidence of some of those contentions, the Complainant points to the mail exchange referred to above and to the Respondent’s open invitation on its website to contact it regarding the domain name, as proving an intention on the part of the Respondent inconsistent with a bona fide offering of services.

Accordingly, the Complainant petitions that the disputed domain name be transferred to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A(i) Identical or Confusingly Similar similar to a Trade Mark or Service Mark in which the Complainant has Rights

Paragraph 4(a)(i) of the Policy requires not just that the domain name and the Complainant’s mark are either identical or confusingly similar, but also that it is a mark in which the Complainant has rights. Those rights might have arisen through use and reputation or through registration.

The Complainant relies on a Texas State trade mark registration. The Certificate of Registration accompanied the Complaint, but not a representation of the mark which is in stylized form. By Procedural Order the Panel invited the Complainant to supply the representation of the mark the subject of the registration. In reply, the Complainant provided a representation of a mark consistent with the mark used on its website and in its other printed business materials, but not one which was file stamped by the State of Texas or which in any other way bore an official link to trade mark registration number 800324137. However, absent challenge from the Respondent, one must assume that this is the mark the subject of the registration.

It is an idiosyncrasy of United States trade mark law that State registrations can exist alongside Federal trade mark registrations under the Lanham Act. Texas trade mark law appears from the limited research undertaken by the Panel to be regulated by Chapter 16 of that State’s Business and Commerce Code. Although the force of a State registration is significantly less powerful than a mark on the Principal Federal Register, there does appear to be examination of a Texas trade mark application on both absolute and (State-wide) relative grounds and so, one may say that the Complainant has rights of a sort by virtue of the Texas trade mark registration.

Although the Complainant does not expressly claim to have unregistered rights or a common law reputation, it does claim to be a well-known provider of telecommunications cabling installation and related products and services. Moreover, it is of interest as to the bad faith discussion (see below) to examine whether the Complainant has proven common law rights, and, if so, whether such rights were accrued before the Respondent registered the disputed domain name.

The Complainant appears to have traded under the name Lantek Communications Inc., since its inception, but again no evidence was provided as to when the company formed under that name or otherwise first adopted it.

By Procedural Order, the Complainant was invited to provide the Panel with evidence of the extent of the common law usage of the mark. In response, the Complainant stated:

“Manner in which the mark is used: Company logo, marketing brochures, envelopes, website, proposals, contracts and other miscellaneous company day-to-day business.”

In fact the following was physically provided to the Panel:

A business card of the Vice President of the Complainant which bore the mark;

A business envelope of the Complainant bearing the mark; and

Two marketing brochures which between them include such matter as a client list and testimonials and which refer to the Complainant’s team as having “more than 75 years of combined experience.”

The Panel visited the Complainant’s website and there repeated is much of the same material from the marketing brochures, but in addition a link to the Complainant’s company history where it is said: “we have become one of the most active and respected technology firms in the North Central Texas area.” There is a single press release dated May 20, 2004, and a link to Projects where there is a passing reference to work in the Dallas / Fort Worth areas over the last 5 years. This material, provided or discovered, constitutes the only support for the Complainant’s assertion of being well-known. What the Complainant has shown is only that its mark is used. It has not shown notoriety, nor a lesser common law reputation through the traditional means of date of adoption and first use of the mark, extent of use through sales and promotional expenditure, market share and customer recognition, and the like. In short, the Complainant has not properly proved common law rights prior to the date the Respondent registered the dispute domain name.

Accordingly, one may take the view that the Complainant has done the minimum to show that it has rights in its trade mark pursuant to paragraph 4(a)(i) of the Policy. However, as the Complaint does not meet the third element of the Policy (bad faith, see below), it is not necessary for this Panel to conclude under the first element of the Policy.

As to the test of confusion, the question is whether the name “lantek” is confusingly similar to the Complainant’s mark which consists of the words “LANTEK COMMUNICATIONS INC.” superimposed upon a globe and orbitals device. That question must be answered in the Complainant’s favour. All developed trade mark jurisprudence teaches that in the comparison of two signs, directly descriptive or otherwise non-distinctive elements are to be ignored or discounted. The Complainant’s mark consists of the wholly non-distinctive corporate identifier, “INC.”; the word “COMMUNICATIONS”, being merely a business sector descriptor; a device which is broadly generic for that business sector; and the invented work “LANTEK”, which is not only the physically dominant element of the mark, but also the most distinctive element. The domain name and the trade mark are consequently confusingly similar.

B. Rights or Legitimate Interests

As previously noted, the Respondent registered the disputed domain name on October 2, 2001, and for a while at least had a largely undeveloped homepage at “www.lantek.com”. At present, the disputed domain name does not resolve to a web site.

Due to the Respondent’s default, it is hard to make a finding based on Respondent’s use of the domain name. However, as already noted, the Complaint fails under the third limb (see below), thus it is not necessary for this Panel to formally address paragraph 4(a)(ii) of the Policy.

C. Bad Faith Registration and Use

As noted, the Complainant has not proved that it was well-known, nor that it had relevant common law rights at the time of the registration of the disputed domain name. On the facts, the Respondent registered the domain name more than two years before there was any communication between the Complainant and the Respondent (the email exchange of January 5 and 6, 2004). The domain name was registered more than two years before the Complainant’s trade mark was registered. Moreover, an Internet search readily discloses a great many instances of use of the Lantek name in closely related business fields by companies other than the Complainant, a fact not inconsistent with the likely origins of the mark (LAN, being the known term for local area network, and TEK being a common misspelling of Tech). It is therefore unlikely that the Respondent had prior knowledge of the Complainant’s trademark rights when the Respondent registered the disputed domain name.

It may be true, as the Complainant asserts, that the Respondent registered the name with the intention of selling it to the highest bidder, but that alone is not in contravention of the Policy or of the UDRP principles, unless the Respondent can be shown to have registered the domain name with the Complainant in mind.

As to the Respondent’s offer to sell the domain name for USD 3,000, the Panel notes that the offer was made as a reply to the Complainant’s inquiry to buy the domain name for USD 1,400. Again, this is not on its own in contravention of the Policy. As stated in numerous UDRP decisions, absent other indications of bad faith, a domain name registrant is free to sell, rent or otherwise deal with a domain name just like any piece of corporeal property.

For these reasons the Panel finds that the Complainant has not shown that the Respondent registered the disputed domain name in bad faith and so fails to satisfy Paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Debrett G. Lyons
Sole Panelist

Dated: March 17, 2005