PACE
Anti-Piracy, Inc. v. Interlok
Claim
Number: FA0202000104559
PARTIES
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.
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.
Judge Harold Kalina
(Ret.) as Panelist.
PROCEDURAL
HISTORY
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 postmaster@interlok.com 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.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. 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.
B. Respondent
No Response was
received.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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