PACE Anti-Piracy, Inc. v. Interlok
Claim Number: FA0202000104559
Complainant is PACE Anti-Piracy, Inc., San Jose, CA (“Complainant”) represented by Roy S. Gordet. Respondent is Interlok, Waveland, MS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <interlok.com>, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 7, 2002; the Forum received a hard copy of the Complaint on February 8, 2002.
On February 8, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <interlok.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 February 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 5, 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On March 14, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The disputed domain name <interlok.com> is identical to Complainant’s INTERLOK mark.
2. Respondent is not commonly known as <interlok.com>. Respondent has not made a bona fide offering of goods or a legitimate noncommercial or fair use of the disputed domain name. Thus, Respondent has no legitimate interest in <interlok.com>.
3. Respondent’s passive use along with the offer to sell the disputed domain name to Complainant for $40,000 is evidence that Respondent registered and used <interlok.com> in bad faith.
No Response was received.
Complainant is in the business of developing and distributing software utility tools and electronic content related to computer security. Complainant developed the INTERLOK system as a tool set for authorizing, protecting, and distributing software that is widely used by developers of pro-audio, font, and graphics software products around the world.
On January 7, 1997, Complainant introduced the INTERLOK product to the market. On January 10, 1997, Respondent registered the disputed domain name. Complainant found out about Respondent’s registration a few months later, when it attempted to register the same domain name. In February 1998, Complainant offered Respondent $2,000 to transfer <interlok.com> to Complainant. According to Complainant, Respondent countered the offer by requesting $40,000 for the disputed domain name.
Complainant registered INTERLOK with the United States Patent and Trademark Office on February 16, 1999, Registration Number 2,223,643. On or around January 10, 2001, Respondent renewed its <interlok.com> registration for another two years. On May 30, 2001, Respondent sent a cease and desist request to Respondent via e-mail and U.S. mail. The letter was returned undeliverable and Respondent did not answer the e-mail. According to Complainant, Respondent’s use of the domain name has been and is currently passive.
Paragraph 15(a) of 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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Identical and/or Confusingly Similar
Complainant has established its rights to the INTERLOK mark both in common law and through subsequent federal registration. The ICANN UDRP policies do not require that the infringed mark has to be registered before infringement. See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the UDRP to “unregistered trademarks and service marks”).
The disputed domain name <interlok.com> is identical to Complainant’s INTERLOK mark. The addition of the generic top-level domain “.com” to Complainant’s mark does not diminish the identical nature between the disputed domain name and the mark since it is impossible for a domain name to be without a generic top-level domain. See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name ROBOHELP.COM is identical to complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to file a Response in this matter. Therefore, the Panel can conclude that Respondent has no rights or legitimate interests in <interlok.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent initially registered <interlok.com> a few days after Complainant announced its new INTERLOK product. There is no evidence presented that Respondent has actually used the disputed domain name other than in a passive manner. Further, after Complainant initially offered to purchase the disputed domain name, Respondent countered the offer with a $40,000 request. Respondent has subsequently renewed the disputed domain name and has continued to sit passively on it for another year. Such use by Respondent cannot be considered a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
Respondent has not presented any evidence that it is commonly known as <interlok.com>. Therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
According to Complainant, Respondent’s use of <interlok.com> has been passive. Based on Complainant’s assertion, and without any evidence presented to the contrary, the Panel concludes that Respondent’s use of <interlok> is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent registered the disputed domain name a few days after Complainant introduced INTERLOK to the market. Later Respondent offered to transfer the disputed domain name to Complainant for $40,000. These actions by Respondent indicate that Respondent registered the disputed domain name primarily for the purpose of selling or transferring it to Complainant for valuable consideration in excess of out-of-pocket costs. Thus, Respondent has registered <interlok.com> in bad faith as outlined in Policy ¶ 4(b)(i). See Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) (finding bad faith where the Respondent offered to sell the Domain Name to the Complainant for $10,000 when Respondent was contacted by Complainant); see also Randstad Gen. Partnet, LLC v. Domains For Sale For You, D2000-0051 (WIPO Mar. 24, 2000) (finding bad faith where the Respondent offered the domain name for sale on its website <internetdomains4u.com> for $24,000).
In finding bad faith use, the Panel is not constrained to rely on the policies outlined in ¶ 4(b) and may look at the totality of the circumstances. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Respondent registered the disputed domain name, which is identical to Complainant’s mark, a few days after Complainant announced its new INTERLOK product to the market. Such registration and subsequent passive use is evidence of opportunistic bad faith and therefore, Respondent has used the disputed domain name in bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that Respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <interlok.com> be transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.)
Dated: March 20, 2002
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