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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ROHO, Inc. v. Mark Duane
Case No. D2001-1168
1. The Parties
Complainant is ROHO, Inc., a Delaware corporation with its principal place of business Belleville, Illinois 62221, U.S.A., represented by Ruth A. Binger and Asim S. Raza, of Danna McKitrick, P.C., Clayton, Missouri 63105, U.S.A.
Respondent is Mark Duane, an individual, who has place of residence in Kenosha, Wisconsin, U.S.A.
2. The Domain Name and Registrar
The domain name at issue is <roho.com>.
The registrar is Tucows, Inc., Toronto, Ontario, Canada.
3. Procedural History
On September 17, 2001, Complainant filed its Complaint, which the WIPO Arbitration and Mediation Center ("the Center") received in electronic form on September 25, 2001, and in hard copy on October 8, 2001. Complainant made the required payment to the Center. The Center acknowledged receipt of the Complaint on September 26, 2001.
On September 28, 2001, the Center transmitted an e-mail to the registrar requesting verification in connection with the case and, on October 3, 2001, received the Registrar's Verification confirming that the domain name <roho.com> was registered with Tucows, Inc., that Respondent Mark Duane was the current registrant of that domain name, that registrant resides in Kenosha, WI, USA, and that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the domain name.
On October 8, 2001, the Center requested that Complainant amend paragraph 15 of its Complaint relating to a place of Mutual Jurisdiction in order to conform to Paragraph 3(b)(xiii) of the ICANN UDRP Rules of Procedure. Complainant submitted an amendment to paragraph 15 of the Complaint which the Center received in electronic form on October 8, 2001, and in hard copy on October 18, 2001.
On October 22, 2001, the Center determined that the Complaint was filed in accordance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"). The Panel agrees with that determination. On the same date, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, to the Respondent by Post/Courier and by e-mail (without Complaint attachments) to the address identified in the Registrar Verification. The Center advised Respondent that the administrative proceeding was formally commenced on October 22, 2001, and that he had until November 11, 2001, to submit a Response. The Center further notified Respondent that if he did not submit a Response by that date, he would be considered to be in default and that the Administrative Panel would be appointed and decide the case.
By e-mail on November 6, 2001, Respondent acknowledged that he had received the Complaint, but asked how long he had to respond and in what format his Response should be. The Center responded on November 9, 2001, directing Respondent to the applicable Rules. Respondent did not file a timely Response. On November 13, 2001, the Center sent Respondent by e-mail a Notification of Respondent Default informing him that he was in default, that the Center would proceed to appoint an Administrative Panel, that the Panel "will decide in its sole discretion whether to consider your Response (if submitted later) in deciding the case." Respondent has not submitted a Response.
On November 30, 2001, in accord with Complainant's request that the dispute be decided by a single-member administrative panel, and having received the Statement of Acceptance and Declaration of Impartiality and Independence of John R. Keys, Jr., the Center appointed Mr. Keys as the sole panelist and transmitted to the Parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision date is December 14, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and Supplemental Rules.
The Administrative Panel issues its decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules. The proceeding has been conducted in the English language.
4. Factual Background
Complainant ROHO, Inc. produces, manufactures and sells inflatable therapeutic cushions and mattresses and has been engaged in this business since 1972.
Complainant owns the trademark ROHO, for which registration on the Principal Register was granted by the United States Patent and Trademark Office on August 18, 1981, Registration No. 1,165,570 in International Class 20. Complainant has registered the mark "ROHO" by itself or with other words, in the following international classes for the following goods or services:
1) Mark "ROHO" in Class 10 for mattresses and cushions for medical purposes (Reg. No. 1380267);
2) Mark "ROHO" for leasing of medical equipment, namely medical mattresses and cushions (Reg. No. 1523981);
3) Mark "ROHO" in Class 20 for mattresses and cushions (Reg. No. 1165570);
4) Mark "ROHO AIR FLOATATION MATTRESS SYSTEM" in Class 42 for rental of mattresses to hospitals, nursing homes and individuals (Reg. No. 1895415);
5) Mark "ROHO MATTRESS AIR FLOTATION SYSTEM" in Class 42 for rental of mattresses to hospitals, nursing homes and individuals (Reg. No. 1895416);
6) Mark "ROHO" in class 12 for vehicle seats, namely, truck, automobile, boat and aircraft seats and cushions (Reg. No. 2088153);
7) Mark "ROHO" in Class 25 for clothing, namely caps, T-Shirts, shirts and jackets (Reg. No. 1620050);
8) Mark "ROHO" plus design in class 20 for mattresses, cushions and pillows (Reg. No. 2322212);
9) Mark "ROHO" in Class 9 for pressure responsive and signaling instruments for use with orthotic fluid filled cushions and mattresses (Reg. No. 2300525);
10) Mark "ROHO" in Class 10 for medical products for therapeutic purposes (Reg. No. 2300526);
11) Mark "ROHO in Class 12 for vehicle seats (Reg. No. 2307802);
12) Mark "ROHO" in class 9 for pressure responsive and signaling instruments (Reg. No. 2286314), and
13) Mark "ROHO" plus design in Class 25 for clothing, namely caps, T-shirts, shirts and jackets. (Reg. No. 2300527).
ROHO, Inc. currently owns the trademark rights to the word "ROHO" in 35 different countries and has developed a worldwide reputation for its products and customer service.
In 2000, ROHO, Inc.’s total product sales were in excess of $25 Million. ROHO, Inc. spends over $1.5 Million annually on selling and marketing activities. Complainant claims, and it is unrefuted, that as a result of Complainant’s continuous, exclusive and extensive use of ROHO as a trademark for some 28 years, that mark has acquired substantial goodwill which has accrued to the exclusive benefit of Complainant.
In late 2000, Complainant commenced development of its web site and discovered that the domain name <roho.com> was previously registered. In February 2001, Complainant attempted to access the web site operating under the domain name. However, upon attempting to access that web site, Complainant was automatically diverted to a different web site operating at <lunker.com>. Subsequently, Complainant discovered that Respondent owned the disputed domain name and the web site located at <lunker.com>. The disputed domain name had been registered on November 13, 2000, subsequent to the registration and use of the Complainant’s trademark name, ROHO.
The web site operating at <roho.com> indicated that <lunker.com> holds itself out as securing domain names and subsequently using these names to provide email services, including email addresses.
On March 13, 2001, Complainant's legal representative sent Respondent a letter asserting Complainant’s rights in the trademark name ROHO, and inviting Respondent to negotiate an agreement for sale and transfer of the disputed domain name.
On March 19, 2001, Complainant's representatives received an e-mail from Respondent in which he claimed no intent of violating the trademark rights of others. He took the position that he would "entertain your ideas or offers" but that he did not intend to sell the domain name to anyone and intended to create emails for persons whose last name was "Roho".
On April 17, 2001, Complainant's representatives responded, challenging Respondent’s stated intent for use of the disputed domain name as pretext and expressing Complainant’s intent to use all available legal means of dispute resolution if necessary. However, in an attempt to avoid such processes, Complainant's representatives offered to reimburse Respondent for any costs associated with registration of the disputed domain name in exchange for surrender of the domain name.
On April 20, 2001, Respondent replied with an e-mail rejecting this proposal with the phrase "When pigs fly", accusing Complainant of reverse domain name hi-jacking and insisting that "providing a e-mail service is a legitimate business because the domain would be available for all to use as it is now."
On June 4, 2001, Complainant's Representatives sent Respondent a letter stating that Respondent was leaving Complainant no choice but to resolve the matter through formal dispute resolution means. Complainant also offered $1,000.00 (U.S.) in exchange for the disputed domain name in order to avoid further costs. On June 6, 2001, Respondent accepted the $1,000.00 (U.S.) offer and suggested a means of transferring the funds for the disputed domain name.
On June 13, 2001, Complainant's Representatives sent Respondent an e-mail asking him to call so they could discuss the logistics of the agreement to which Respondent replied on June 13, 2001, by refusing to discuss the matter and providing Complainant three options by which to make the payment and transfer the name. The three options, he said, were non-negotiable.
On June 18, 2001, Complainant's representatives rejected Respondent’s proposed methods of exchange and counter-proposed a different method. In addition, they restated Complainant’s position that it did not acknowledge the Respondent as the rightful owner of the disputed domain name and that any payment being offered was merely made to avoid further costs.
On June 18, 2001, Respondent rejected Complainant’s counter-proposal with the statement "All deals are off . . . your terms are unreasonable . . ." This apparently was the last communication between the parties until Complainant filed its Complaint in this proceeding.
5. Parties’ Contentions
Complainant contends that the disputed domain name <roho.com> is identical or confusingly similar to Complainant’s trademark name ROHO, in which Complainant has prior and superior rights. More specifically, Complainant asserts that the disputed domain name includes Complainant’s exact trademark name in its entirety and that the disputed domain name is confusingly similar to Complainant’s trademark name in that a reasonable Internet user would assume that the domain name in issue is somehow affiliated with Complainant.
(ii) Legitimate Interest
Complainant further contends that Respondent does not have any rights or legitimate interests with respect to the disputed domain name. Specifically, Complainant asserts, first, that Respondent’s purported use of the <roho.com> domain name for sale to those individuals with the surname "Roho" is disingenuous because only a scant few people in the United States use the name "Roho" as a surname.
Second, Complainant asserts that Respondent is holding the disputed domain name passively and passive holding of domain names that contain in their entirety the registered mark of another does not convey to Respondent rights or legitimate interests in the disputed domain name.
Third, Respondent is not known commonly by Complainant’s well-established trademark name and has no otherwise credible excuse for utilizing Complainant’s trademark name in its domain name <roho.com>.
(iii) Bad Faith
Complainant contends that the disputed domain name was registered or acquired in bad faith primarily for the purpose of selling or otherwise transferring the domain name registration to Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. In support of this contention, Complainant asserts, first, that Respondent registered the disputed domain name <roho.com> although a simple search of the United States Patent and Trademark website at "www.uspto.gov" revealed, or would have revealed to Respondent through a due diligence search, that the trademark name ROHO had been registered by Complainant. Complainant advised Respondent as early as March 13, 2001, that it was the rightful owner of the trademark name and that it would purchase the ownership to the domain name.
Second, Respondent was willing to exchange the disputed domain name for $1,000.00, an amount far in excess of any registration fees paid by the Respondent.
Third, Respondent has failed to use the disputed domain name.
Respondent has not submitted a Response in this proceeding.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case:
(i) [Respondent's] domain name is identical or confusingly similar to a trademark or servicemark in which the Complainant has rights;
(ii) [Respondent has] no rights or legitimate interests in respect of the domain name; and
(iii) [Respondent's] domain name has been registered and is being used in bad faith.
A. Identity or Similarity of domain name and mark
The disputed domain name <roho.com> is identical to Complainant's trademark ROHO. "Roho" is identical to ROHO. The use of the top level of the domain name "com" does not change the identical nature of the mark. Eastman Kodak Co. v. Dionne Lamb, FA0106000097644 (Nat. Arb. Forum July 17, 2001); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000). Complainant Roho, Inc. has used the mark ROHO in commerce since at least 1973, and has had it registered on the Principal Register since 1981, obviously well before Respondent registered the disputed domain name in November 2000. Complainant has some 13 registered trademarks using the mark ROHO and is actively using the mark in commerce in the United States and in other countries. Complainant has established the identity of the domain name and the trademark, and it is, therefore, unnecessary to address the question of whether there is confusing similarity between the two.
B. Legitimate Interests
There is no evidence that Respondent is commonly known by the name "Roho" or anything similar, and he thus has no underlying established interest in that name. See Paragraph 4(c) of the Policy.
Under Paragraph 4(c)(i) of the Policy, Respondent may demonstrate that he has a legitimate interest in a domain name by showing that, before receiving notice of the dispute, he used the domain name in connection with a bona fide offering of goods or services. The evidence indicates that Respondent has not used the domain name <roho.com> in connection with any offering of goods or services. An Internet user going to that address is merely transferred to another website, <lunker.com>, which offers e-mail services.
<lunker.com> offers email addresses, purportedly for free, one of which is <roho.com>. While Respondent did not file a Response in this proceeding, prior to the Complaint he took the position that he did not intend to sell the domain name to anyone but intended to create emails for persons whose last name was "Roho". Complainant contends that this is disingenuous and has produced evidence to the effect that there are very few persons in the United States using the surname "Roho", perhaps as few as three. Under the circumstances, Respondent's statement that he had "spent a lot of money trying to come up with the right names to start an email service for people" appears to be less than forthright, at least as it applies to the name Roho.
As a pertinent aside, Complainant explained that its own corporate name did not derive from a surname. The word "ROHO" as used by ROHO, Inc., is an arbitrarily created name derived from its owner’s name, "Robert H. Graebe." Mr. Graebe traditionally signed his name "R.H. Graebe" such that the periods following his first and middle initials appeared as small "o"s. "RoHo" became "ROHO". Such a mark, consisting of an arbitrary collection of letters, is considered a very strong trademark.
Based on the evidence, the Panel also agrees with Complainant's contention that Respondent is merely holding the domain name passively. Such passive holding of the domain names does not confer a legitimate interest in that name upon Respondent. American Home Products Corp. v. Malgioglio, D2000-1602 (WIPO February 19, 2001); Nike, Inc. v. Crystal Int'l, D2001-0102 (WIPO March 19, 2001).
Given the foregoing and the fact that Respondent has not come forward with any more cogent explanation of a legitimate interest in the name, as it would be his burden to do, the Panel finds that Respondent has not used the domain name <roho.com> in connection with a bona fide offering of goods or services and thus concludes that Respondent has not been shown to have a legitimate interest in the domain name <roho.com>.
C. Bad Faith
Turning to the issue of bad faith, there is, first of all, no question that if Respondent did not know, he could easily have determined that ROHO was a well-established, registered U.S. trademark, and that in registering <roho.com> he was registering an identical domain name. Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith. Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum August 30, 2000); Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000).
Paragraph 4(b)(i) of the Policy prescribes that the following "shall be evidence of the registration and use of a domain name in bad faith":
circumstances indicating that [Respondent has] has registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name.
The Panel finds that Respondent in fact clearly expressed his willingness to entertain an offer to sell the domain name to Roho, Inc. when first contacted by Roho's legal representatives, that he adamantly refused to consider transferring the name in exchange for reimbursement of his actual costs, and that he subsequently agreed to sell the name to Roho for $1,000, an amount presumably well in excess of his costs. He has not, in any event, come forward to contest this point. Respondent refused to go through with the sale when Roho did not agree to any of the non-negotiable methods that he proposed to effect the exchange of payment and transfer of the name.
The Panel concludes that Respondent's refusal to transfer the name in exchange for his costs and his agreement to sell the name <roho.com> to Roho, Inc. for $1,000 constitute sufficient evidence of bad faith in registering and using the domain name. Little Six, Inc. v. Domain for Sale, FA 96967 (Nat. Arb. Forum April 30, 2001), (offer to sell name for $1,000 was evidence of bad faith).
Finally, the fact that Respondent has not used the disputed domain name is further evidence of bad faith. Even passive activities such as the "parking" or passive holding of a domain name with the knowledge that it infringes the trademark of another is evidence of bad faith. Little Six, Inc. v. Domain for Sale, FA 96967 (Nat. Arb. Forum April 30, 2001); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO December 7, 2000); Grundfos A/S v. Lokale, D2000-1347 (WIPO November 27, 2000); Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum August 30, 2000); Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).
The Panel thus concludes that the evidence is sufficient to establish that Respondent registered and is using the name <roho.com> in bad faith.
Complainant proved by sufficient evidence each element prescribed by Paragraph 4(a) of the Policy and is thus entitled to the relief requested. The Panel therefore orders that the Registrar transfer the domain name <roho.com> from Respondent Mark Duane to Complainant Roho, Inc.
John R. Keys, Jr.
Dated: December 14, 2001