Compudata S.A. Corporation
v. Gilbert Melgar
Claim Number: FA0806001211478
PARTIES
Complainant is Compudata S.A. Corporation (“Complainant”), represented by Robert
C. Kain, Jr.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <multiscancorp.com>, registered with Godaddy.com,
Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Jonas Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 23, 2008; the
National Arbitration Forum received a hard copy of the Complaint on June 23, 2008.
On June 24, 2008, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <multiscancorp.com> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent
is bound by the Godaddy.com, Inc.
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 June 30, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 21, 2008 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@multiscancorp.com by e-mail.
A timely Response was received in electronic format only, but not in
hard copy on July 21, 2008. The Response is therefore incomplete under
ICANN Rule 5.
An Additional Submission was
submitted by Complainant on July 29, 2008 and was determined to be deficient.
On July 29, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant, Compudata, is a Argentinean based
company with an exclusive
Complainant Compudata is the owner of Reg. No. 1,996,349 for the
trademark MULTISCAN.
MULTISCAN readers are being used by
Complainant Compudata has a related company in the United States,
Multiscan Corp., which exclusively distributes MULTISCAN bar code readers and
currency counters and mail handling machines. Multiscan Corp. is the exclusive
distributor of MULTISCAN goods in the
Complainant Compudata owns a
Complainant's trade name is Multiscan Corp. and Complainant Compudata
owns a trademark for "MULTISCAN" and has trademark rights to the mark
MULTISCAN based upon its sales of MULTISCAN machines throughout the world.
Respondent's domain <multiscancorp.com>
is identical or confusingly similar to Complainant's trade name and encompasses
all of Complainant's trademark.
The mere addition of "corp" to the domain is not sufficient
to distinguish them. Additionally, Complainant currently uses "multiscan-corp.com"
as its website address. Therefore, mere deletion of the "- " from Complainant's domain makes Respondent's domain
identical or confusingly similar.
Upon information and belief, before any notice to 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.
Upon information and belief, Respondent has not been commonly known by the
domain name. Upon information and belief, Respondent is not making a legitimate
noncommercial or fair use of the domain name, and has an
intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue. Respondent’s current website
does not offer any goods or services. None of the links on the homepage are
active. When a user clicks on a link for another page, it merely resolves to
the same home page with identical data and text. The text on the accused website
is complete jibberish. The first words in the main body text read "Lorem
ipsum dolor...." The "lorem ipsum dolor" text on the website is
often used as place holder text to demonstrate a font or merely to give the
appearance of legitimate text. The words are nonsensical and have no meaning.
Therefore, Respondent has no legitimate interests with respect to the domain.
The images contained on the website are stock photos, again to merely give the
appearance of legitimate use.
Additionally, a review of Respondent's WHOIS information may provide
relevant information regarding a common name of the Registrant. The WHOIS
information has no relation to "multiscancorp.” Therefore, Registrant-Respondent cannot find
shelter in the provisions of Policy ¶ 4(c)(ii) by
reason of its common name. See, for example, Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating that the fact that "nothing in Respondent's WHOIS information
implies that Respondent is 'commonly known by' the disputed domain name"
is a factor in determining that Policy ¶ 4(c)(ii) does
not apply); see also Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
a respondent does not have rights in a disputed domain name under Policy ¶ 4(c)(ii) where that respondent is not known by the competing
mark).
The fact that the domain name includes the entire MULTISCAN mark
supports a finding of bad faith. See Wal-Mart
Stores, Inc. v. Milchen, D2005-0130 (WIPO April 10, 2005); Cellular One Group v. Brien, D2000-0028
(WIPO March 10, 2000); Telstra Corp. Ltd.
v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Additionally, the disputed domain name is identical to Complainant
Compudata's trade name, with the addition of the generic top-level domain
".com." It is well settled
that addition of a generic top-level domain does not remove the confusing
similarity of a domain name. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000). Further,
the accused domain was registered on February 26, 2008. Complainant's rights to
the mark MULTISCAN predate this registration by nearly 20 years. Respondent's registration and use of the
domain as a place holding page is bad faith.
A timely Response was received in electronic format only, but not in
hard copy, on July 21, 2008. The Response is therefore incomplete under
ICANN Rule 5 and will not be considered by the Panel.
An Additional Submission was submitted by Complainant on July 29, 2008 and was determined to be deficient. The Panel will not consider this Additional Submission in its Decision.
DISCUSSION FINDINGS
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.
Complainant has stated that the <multiscancorp.com> domain name
is confusingly similar to Complainant’s MULTISCAN mark.
The Panel makes the following observations.
The disputed domain name incorporates Complainant’s trademark MULTISCAN in its
entirety. Because “multiscan” is the distinctive part of the disputed domain
name, it is confusingly similar to Complainant’s trademark MULTISCAN. In addition to the trademark MULTISCAN the
disputed domain name also includes the word “corp,” which is the common
abbreviation for “corporation,” and the generic top-level domain (“gTLD”) “.com.”
The addition of the common, descriptive
or generic term ‘corp’ does not change the fact that the disputed domain name
is confusingly similar to Complainant’s trademark. Moreover, the top level of
the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar.
In light of the above the Panel finds that
the domain name <multiscancorp.com>
is confusingly similar to Complainant’s trademark MULTISCAN.
The complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name.
Complainant has stated the following.
- Respondent has not made use of, or made demonstrable preparations to
use, the domain name in connection with a bona
fide offering of goods or services.
- Respondent is not commonly known by the domain name.
- Respondent is not making a legitimate noncommercial or fair use of
the domain name.
- Respondent has an intent for commercial gain
to misleadingly divert consumers or to tarnish the trademark or service mark at
issue.
- Respondent's current website does not offer any goods or services.
None of the links on the homepage are active. When a user clicks on a link for
another page, it merely resolves to the same home page with identical data and
text. The text on the accused website is complete jibberish. Therefore,
Registrant has no legitimate interest with respect to the domain. The images
contained on the website are stock photos, again to merely give the appearance
of legitimate use.
- Respondent's WHOIS information has no relation to "multiscancorp.”
The Panel finds that Complainant has made a prima facie case that
Respondent lacks rights and legitimate interests in the disputed domain name,
thus shifting the burden of proof to Respondent to show that is does have
rights or legitimate interests in a domain name. A timely Response from
Respondent was received in electronic format only, but not in hard copy, on July 21, 2008.
The Response was thereby incomplete under ICANN Rule 5 and was not
considered by the Panel.
Therefore, the Panel finds that Complainant
has shown that the Respondent lacks rights and legitimate interests in the
disputed domain name under UDRP ¶ 4(a)(ii).
Complainant has alleged the following regarding Respondent’s bad faith:
-
The fact
that the domain name includes the entire MULTISCAN mark supports a finding of
bad faith,
-
The
accused domain was registered on February 26, 2008. Complainant's rights to the
mark MULTISCAN predate this registration by nearly 20 years and Respondent's
registration and use of the domain as a place holding page is bad faith.
The Panel notes that lack of bona fide use, on its own, is
insufficient to establish bad faith where the respondent has not attempted to
sell the domain name for profit, has not engaged in a pattern of conduct
depriving others of the ability to obtain domain names corresponding to their
trademarks, is not a competitor of the complainant seeking to disrupt the
complainant's business, and is not using the domain name to divert Internet
users for commercial gain (see Societe
des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct.
12, 2001). Complainant has neither alleged nor shown any other circumstances or
facts in support of its assertion of bad faith on the part of Respondent.
Thereby Complainant has not met the burden of proof incumbent on him.
In light of the above it is the Panel’s
finding that Complainant has not shown that Respondent has registered and used
the <multiscancorp.com> domain
name in bad faith.
DECISION
Complainant having failed to prove
Respondent’s registration and use in bad faith and thereby not having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Jonas Gulliksson, Panelist
Dated: August 12, 2008
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