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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LPA LES PRODUITS ASSOCIES SA vs. ICCWorldWide Limited
Case No. D2000-0900
1. The Parties
The complainant in this administrative proceeding is LPA LES PRODUITS ASSOCIES SA, Switzerland ("Complainant"), having its principal place of business at 39 rue de Peillonex, CH-1225 Chкne-Bourg, represented by Mr. Thierry Ulmann, Esq., 14 rue du Conseil-Gйnйral, CH-1205 Geneva.
The respondent is ICCWorldWide Sarl, Switzerland ("Respondent"), having its principal place of business in 20 route de Prй-Bois, CH-1217 Meyrin, represented by Mr. Herby Olschewski, P.O. Box 1821, CH-1215 Geneva.
2. The Domain Name and Registrar
This dispute concerns the domain name "robotcock.com" ("Domain Name") registered with Network Solutions, Inc., Virginia, USA ("Network Solutions" or "Registrar").
3. Procedural History
A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy implemented by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("Policy"), and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date ("Rules") was submitted to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on July 31, 2000 by e-mail and was received on August 10, 2000, in hardcopy.
On August 6, 2000, a Request for Registrar Verification was transmitted to the Registrar which confirmed by Verification Response of August 11, 2000, that the disputed Domain Name was registered with NSI and that Respondent was the current registrant. In addition, the Registrar forwarded the WHOIS details, confirmed that its Service Agreement 5.0 was in effect, and stated that the Domain Name was on "active" status. However, the Registrar was not in receipt of the Complaint sent to it by Complainant.
The assigned WIPO Center Case Administrator completed a Formal Requirements Compliance Checklist on August 15, 2000. After finding several formal deficiencies with the Complaint, a Complaint Deficiency Notification was sent to Complainant on August 15, 2000.
On August 18, 2000, the WIPO Center received an Amendment to the Complaint which satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.
The Panel independently determines and agrees with the assessment of the WIPO Center that the amended Complaint is in formal compliance with the applicable requirements.
A Notification of Complaint and Commencement of Administrative Proceeding was transmitted to Respondent on August 24, 2000, setting a deadline of September 12, 2000, by which Respondent could file a Response to the Complaint.
On September 5, 2000, the WIPO Center received by e-mail Respondent’s comments to the Complaint which have been incorporated thereafter into a formal Response, received by WIPO Center on September 11, 2000.
Both Complainant and Respondent requested a single-member panel. Consequently, the WIPO Center invited the undersigned to serve as panelist in Case No. D2000-0900, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence, which was duly signed and returned to the WIPO Center on September 26, 2000.
The WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The projected decision date was October 11, 2000. The Administrative Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.
Complainant submitted its Final Comments to the Complaint on September 27, 2000, and Respondent its Response to Complainant’s Final Comments on September 28, 2000.
4. Factual Background
Complainant is the holder of the trademark ROBOTCOCK, registered with the United States Patent and Trademark Office on November 3, 1998 in international class 10 for hand-held vibrators for therapeutic use in body massage and stimulation, and attachments therefor. The mark is used to sell electric devices serving the intimate self-pleasuring of women.
The domain name "ROBOTCOCK.COM" was registered by Respondent on January 4, 1998.
The WHOIS-Database of NSI today is showing the following entry:
ICCWorldWide Limited (ROBOTCOCK-DOM)
LPA Les Produits Associes SA
39 rue de Peillonex
Chкne-Bourg, GE 1225 CH
5. Parties’ Contentions
Complainant contends that the Domain Name has exactly the same spelling as Complainant’s registered trademark, so that it can be considered as identical.
Respondent has no legal title to use this trademark and is using the Domain Name to blackmail Complainant concerning an amount of money which allegedly should be due to Respondent from Complainant. The refusal to transfer the Domain Name to Complainant constitutes a misuse of the Domain Name registration.
Respondent’s behavior is furthermore showing a clear bad faith attitude regarding the disputed Domain Name. The Domain Name was registered primarily for the purpose of disrupting the business of Complainant.
Respondent maintains that the Domain Name is already owned by Complainant since it was duly registered by Respondent at the request and by instruction of Complainant.
After the registration, Respondent submitted to Complainant an invoice of $128,000 for the Eroscillator / RobotCock project management over 18 months, for the initial registration and for the hosting of the Domain Name. Since Complainant did not pay this invoice, Respondent refused to transfer the Domain Name to Complainant. Respondent contends that it is standard practice for an ISP to reject DNS changes until the hosting account is settled.
Respondent never claimed ownership in the Domain Name. The content at Robotcock.com is entirely the property of Complainant and at no time any copyright has been violated. All links and contact information refer to Complainant. The Domain Name was not registered or acquired in bad faith.
In addition, Respondent contends that Paragraph 4 (a) (i) of the Policy (domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights) does not apply, as the respective domain is already owned by Complainant and all the website contents reflect Complainant's logos and trademarks. Paragraph 4 (a) (ii) regarding Respondent’s rights or legitimate interests does likewise not apply since Respondent never claimed ownership in the Domain Name and merely was the agent, instructed to register the domain and to supply the content on behalf of Complainant. Respondent did not act in bad faith having acted as an agent. There is absolutely no financial gain drawn from the domain for Respondent. The only action taken by Respondent was to deny Complainant to change the DNS server information until such time as Complainant’s account with Respondent was settled and in good standing.
Furthermore, Respondent contends that the complaint is an abuse of the ICANN Policy for Domain Name Dispute Resolution. The Domain Name in question is already owned by Complainant and Complainant is attempting to enforce a DNS change without meeting its financial obligations for legitimate services rendered.
6. Discussion and Findings
According to Paragraph 4 (a) of the Policy, Complainant must cumulatively prove the following:
(i) that the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,
(ii) that Respondent has no legitimate interests in respect of the Domain Name; and,
(iii) that the Domain Name has been registered and used in bad faith.
Identical or Confusingly Similar Domain Name
The domain name at issue is "robotcock.com". The relevant part of this Domain Name "Robotcock" is identical with the trademark registrations of the word "Robotcock" held by Complainant.
Respondent’s Rights or Legitimate Interests in the Domain Name
Complainant is the undisputed beneficial owner of the Domain Name, although the latter is formally registered in Respondent's name. Respondent does not claim to have ownership rights or an interest in using the Domain Name in the sense of the Policy.
However, Respondent refuses to transfer the Domain Name to Complainant because of an alleged outstanding financial claim derived from a contractual relationship between the parties. Respondent states that it will transfer the Domain Name to Complainant, but only upon the condition that Claimant settles Respondent's account for the services performed.
Thus, the present domain name dispute seems to be a part of a greater dispute between the parties regarding (among other things) the existence and performance of a contractual relationship and the compensation in connection with alleged services provided to the beneficial owner of the domain. These issues of material law need to be examined in an ordinary court proceeding where all means of evidence are available. By contrast, the Uniform Dispute Resolution Policy, the Rules and the Supplemental Rules are limited administrative proceedings, governing the admissibility or rejection of a number of top-level domain registrations which are in a potential conflict with established trademarks. The purpose of the Policy is to prevent the misuse of the domain name system by so-called cybersquatters, but not to handle any contractual disagreements of two parties in connection with a domain name registration. The Panel is lacking both the power and the legal means to deal with questions concerning an underlying contractual relationship, the existence or enforceability of outstanding debts, the legality of a right of retention, the allegation of blackmailing, etc. Thus, the Panel is unable to determine in the present case whether or not Respondent's refusal to transfer the respective Domain Name was based on good law, and whether or not Respondent has a legitimate interest in using the Domain Name as a tool to enforce its alleged financial claim against Complainant.
In view of what follows, the question whether or not Respondent’s alleged right of retention may or must be considered as a legitimate interest in the sense of Paragraph 4 (a) (iii) needs not to be decided in the present case as the third element, required under the Policy, seems to be missing anyway.
Domain Name Registered and Used in Bad Faith
According to Paragraph 4 (a) (iii) of the Policy, Complainant has the burden of prove that Respondent registered and used the respective Domain Name in bad faith.
Since Respondent, uncontestedly, registered the Domain Name for and on behalf of the Complainant (albeit in its own name), bad faith at the stage of registration is not apparent for the Panel. Not even Complainant contends bad faith at this stage and supplies no evidence for it.
In conclusion, the Panel finds that a bad faith registration of the Domain Name by Respondent has not been proven in these UDRP proceedings. Consequently, the Panel denies Complainant's request to transfer the disputed Domain Name at this stage.
Bernhard F. Meyer-Hauser
Dated: October 11, 2000