Joel Bloomer v. Marian Raicea
Claim Number: FA1011001357342
Complainant is Joel Bloomer (“Complainant”), Canada. Respondent is Marian Raicea (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roscan.com>, registered with Network Solutions, LLC.
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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2010; the National Arbitration Forum received payment on November 9, 2010.
On November 9, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <roscan.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@roscan.com. Also on November 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 1, 2010.
On December 6, 2010 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
On December 10, 2010, in accordance with Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy, the Panel issued an Order and requested Complainant to provide additional information and evidence.
On December 15, 2010 the Complainant filed an additional submission in response to the Order of the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Joel Bloomer alleged that ROSCAN is a registered trademark of Roscan, Inc. a company that was also known as “9188-9204 Quebec Inc.”. Complainant asserted that the ROSCAN mark was assigned to 9188-9204 Quebec. Inc. by Gunter Rosenthal, President of G. Rosenthal Imports, which was also doing business as “Roscan”.
Complainant contended that Respondent had been an employee of G. Rosenthal Imports Limited d/b/a Roscan from August 2, 1997 to May 3, 2009. Complainant asserted that Respondent’s position was MIS Director and that it had been responsible for renewing the registration of the <roscan.com> domain name with the registrar. Complainant alleged that soon after Respondent’s termination from employment in May 2009, Respondent had changed all name server records, removing control of the disputed domain name from G. Rosenthal Imports Limited d/b/a Roscan, Inc. and requiring the company to register a new domain name for use in connection with its business.
Complainant argued that the <roscan.com> domain name resolves to a blank page and any email directed to <roscan.com> is no longer directed to the intended recipients, which are the employees and administration of Roscan, Inc.
Complainant alleged that Respondent sent an email correspondence to Complainant offering to sell the <roscan.com> domain name to Complainant for $12,000.
B. Respondent
Respondent alleged that ROSCAN is a registered trademark of Gunter Rosenthal Imports Ltd. Respondent provided evidence of the United States Patent and Trademark Office registration for the ROSCAN mark, which showed the registrant of the mark as “Gunter Rosenthal Imports Ltd. Corporation. Respondent also asserted that Gunter Rosenthal Imports Ltd. had filed for bankruptcy on July 2, 2009.
Respondent contended that the listed activity of Roscan, Inc., also known as “9188-9204,” is “Management of a Commercial Building,” while the ROSCAN mark is for kitchenware.
Respondent asserted that it had intended to use the <roscan.com> domain name for the Romanian community in Canada (“ROmanianS in CANada”). Respondent alleged that it had been working for Gunter Rosenthal Imports Ltd. (also known as Roscan) since February 1995 and loved to help as many Romanian immigrants as possible find jobs upon arriving in Canada.
Respondent asserted that it had not registered and was not using the <roscan.com> domain name in bad faith. Respondent argues that it never had any intention to tarnish the ROSCAN mark or to offer goods or services related to kitchenware. Respondent alleged that its only intention had been to use the disputed domain name for the Romanian community in Canada.
Respondent alleged that it had been contacted via telephone by Complainant, who had offered to buy the disputed domain name and requested that Respondent email Complainant a price. After Respondent emailed the price to Complainant, Respondent asserted that he never received a response or any efforts at negotiation, so he assumed Complainant had not actually been interested in buying the disputed domain name.
C. Additional Submission of the Complainant
The Complainant asserted that the Canadian Intellectual Property Office registry document shows that the owner of the ROSCAN trademark is Roscan Inc. Additionally, he stated that the submitted Asset Purchase Agreement showed that all assets of Gunter Rosenthal Imports Limited, including tradenames, had been sold to 9188-9204 Quebec Inc.
The Complainant submitted a document indicating his relationship with and position in Roscan Inc.
The Complainant submitted the historical WHOIS records of the disputed domain name, which showed that the domain name had been registered to G. Rosenthal Imports Ltd, from at least July 24, 2001 to as recently as July 17, 2009, at which point the Respondent changed the registrant to QITX Inc, which is the Respondent’s separate commercial enterprise and for which he is the sole shareholder.
He asserted that the Respondent also changed the name servers for the contested domain name, but since they are name servers of his commercial enterprise under his control, they continued to deliver mail and web requests to Roscan Inc.’s servers for over 1 year. According to Complainant, the proper pointing of the disputed domain was cancelled once the Respondent’s request for $12,000.00 CAD to transfer the domain to Roscan Inc. was not accepted.
Roscan Inc. is the exclusive owner of the word trademark ROSCAN registered with the Canadian Intellectual Property Office under Reg. No. TMA230741. The trademark was previously owned by G. Rosenthal Imports Ltd.
The Complainant is the I.T. Manager (employee) of Roscan Inc. and authorized to act on behalf of Roscan Inc. in the domain dispute matter.
The Respondent is the current registrant of the disputed domain name. According to the previous WHOIS records of the domain, the contested domain name was owned by G Rosenthal Imports ltd. on July 24, 2001 and on July 17, 2009. On July 29, 2009 the domain was owned by QITX Inc., of which the Respondent is the president and majority shareholder.
The Respondent had been an employee of Gunter Rosenthal Ltd. from 1995 until the close of the company due to bankruptcy in 2009.
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."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
The Panel finds that the exclusive owner of the word trademark ROSCAN (registered with the Canadian Intellectual Property Office under Reg. No. TMA230741) is Roscan Inc. The Complainant submitted a document showing that he is an employee of Roscan Inc. holding the position of I.T. Manager and that he is duly authorized to act on behalf of Roscan Inc. in this domain dispute matter.
The Panel highlights that the wording of the Policy does not require that the Complainant shall be the exclusive owner of the mark, it only provides that the contested domain shall be identical with or confusingly similar to (inter alia) a trademark in which the Complainant has rights. See Grupo Televisa, S.A. v. Party Night Inc., D2003-0796 (WIPO Dec. 2, 2003).
The Panel finds that the trademark owner's statement that the Complainant is duly authorized to act on its behalf in this matter is sufficient to prove that the Complainant has rights in the trademark ROSCAN - at least within the scope of this domain name dispute matter. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding that the purpose of the test under paragraph 4(a)(i) of the Policy is simply to ensure that Complainant has a bona fide basis for making the Complaint in the first place).
The Panel further finds that the <roscan.com> domain name is identical with the ROSCAN mark because the single differing factor is the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the presence of a gTLD, when combined with Complainant’s identical mark, nevertheless renders the disputed domain name identical to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The WHOIS information for the <roscan.com> domain name lists the registrant as “Marian Raicea.” Although the Complainant did not address this issue, the Panel finds that this information indicates that Respondent is not commonly known by the disputed domain name and thus does not possess rights and legitimate interests according to Policy ¶ 4(c)(ii). The Panel notes that the owner of the ROSCAN mark, who authorized Complainant to act on its behalf in this procedure, is Roscan Inc., thus it is highly probable that this company is commonly known by the disputed domain name.
Complainant asserted and proved that Respondent had offered to sell the <roscan.com> domain name to Complainant for $12,000. The Panel finds that such an offer to sell the disputed domain name shows a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel highlights that Respondent only stated but did not prove that it had intended to use the <roscan.com> domain name for the Romanian community in Canada (“ROmanianS in CANada”), therefore the Panel could not accept this argument as evidence for demonstrating legitimate noncommercial and fair use within the meaning of Policy ¶ 4(c)(iii).
As mentioned above, Complainant alleged and proved that Respondent sent an email correspondence to Complainant offering to sell the <roscan.com> domain name to Complainant for $12,000. The Panel finds that this sum is well in excess of reasonable out-of-pocket costs. The Panel thus finds that Respondent’s offer to sell the disputed domain name to Complainant for this amount evidences bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
It is an established fact in this procedure that Respondent was a former employee of G. Rosenthal Imports Limited d/b/a Roscan; this was expressly admitted by both parties. The data of the domain WHOIS records submitted by Complainant show that after Respondent’s termination, Respondent very likely changed all the name server records for the disputed domain name, effectively removing the <roscan.com> domain name from G. Rosenthal Imports Limited’s control. Thus, the Panel finds that the circumstances surrounding Respondent’s registration of the disputed domain name reveal bad faith registration and use under Policy ¶ 4(a)(iii). See DINOFLEX Mfg. Ltd. v. Recreational Tech. Indus. Ltd., FA 292846 (Nat. Arb. Forum Aug. 17, 2004) (“The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith since Respondent willfully registered the name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which can be inferred from the involvement of Mr. Damberg in the industry and as a past or current employee of Complainant and Respondent respectively.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
The Panel highlights that although all three elements of the ICANN Policy are met in this procedure, it is an important relevant circumstance that the document demonstrating Complainant's right in the ROSCAN mark (within the scope of this procedure) authorizes Complainant to act on behalf of the exclusive owner of the mark, Roscan Inc. in the domain dispute matter only, but does not authorize Complainant to register or hold the disputed domain name in its own name.
Thus, in the Panel's view the disputed domain name could only be transferred to the owner of the ROSCAN mark, Roscan Inc. but could not be transferred to the Complainant. The Panel therefore finds that the cancellation of the domain name is the only appropriate remedy in this case. See Lilly ICOS LLC v. Burden, D2004-0794 (WIPO December 20, 2004) (finding that the transfer of the disputed domain names to Complainant would interfere with the rights of the third party trademark holder, and therefore considered cancellation as the relevant remedy even though Complainant requested the transfer of the disputed domain names).
Accordingly, it is Ordered that the <roscan.com> domain name be CANCELLED.
Dr. Katalin Szamosi, Panelist
Dated: December 22, 2010
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