Tokheim Corporation v. CYBERTEXX
Claim Number: FA0112000103363
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.
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.
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 email@example.com 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.
The Complainant requests that the domain name be transferred from the Respondent to the 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.
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.
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.
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.
The domain name shall not be transferred; the relief requested is denied.
Dated: February 19, 2002
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