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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oki Data Americas, Inc. v. Berkshire Trust
Case No. D2002-0415
1. The Parties
The Complainant is Oki Data Americas, Inc. ("Oki Data"), a Delaware, United States of America corporation, with a place of business at 2000 Bishops Gate Road, Mount Laurel, New Jersey 08054-4620, United States of America.
The Respondent is Berkshire Trust, 2381 Quincy Way, Palm Springs, California 92262, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <1800okidata.com>.
The Registrar is Abacus America Inc., d.b.a. Names4ever.com, 10350 Barnes Canyon Road, San Diego, California 92121, United States of America.
3. Procedural History
The Complaint was filed electronically on May 1, 2002, a hard copy was received on May 6, 2002. On May 10, 2002, the WIPO Arbitration and Mediation Center ("the Center") completed the formal requirements compliance checklist, and issued a Notification of Complaint and Commencement of Administrative Proceeding. This Panel concurs that the Complaint meets the formal requirements, and that Respondent was properly notified of the Complaint. However, Respondent did not file a Response. On May 31, 2002, the Center issued a Notification of Respondent Default. This Panelist was asked to serve and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On June 6, 2002, the Center issued its Notification of Appointment of Administrative Panel and Projected Decision Date, that this Panelist was appointed, and projected the date for decision as June 6, 2002. There have been no other submissions. The language of this proceeding is English.
4. Factual Background
The Complainant and its predecessors in interest and title, and related companies, have since December 15, 1972, used and Oki Data continues to use the name and mark "OKIDATA" in the United States and around the world for computer programs, facsimile machines, printers and parts thereof. Oki Data has been and continues to be engaged in the development, manufacture and sale of a full line of computer printers and parts thereof. Oki Data is a global leader in the manufacture and sale of computer peripherals and accessories.
The "OKIDATA" mark is registered on the Principal Register in the U.S. Patent and Trademark Office for "computer programs, printers, and parts thereof" as incontestable U.S. Registration No. 1,336,348 based on use of the mark in United States commerce beginning at least as early as December 15, 1972.
Oki Data has used and continues to use the "OKIDATA" mark in the United States under the direction and control of a related company, Oki Electric Industry Co., Ltd., record owner of Registration No. 1,336,348.
Oki Data is an exclusive licensee under the "OKIDATA" mark of Oki Electric Industry Co., Ltd., and has the right under such exclusive license to use the mark and enforce rights in the mark in the United States.
Oki Data has registered many domain names, including names comprising "OKIDATA": <okidata.com>, <okidata.net>, <okidata.cl>, <okidata.com.mx>, <okidata.com.bo>, <okidata.com.ar>, <okidata.com.br>, <okidata.com.pr>, <okidatafax.com>, and <okidataservice.com>.
In order to provide its customers with the greatest level of support for its products, Oki Data maintains a customer support center which is available via a toll free telephone number: 1 800 OKIDATA. Oki Data selected the 1 800 OKIDATA phone number for its customer support center because it the most obvious and easiest number for customers to remember since it comprises Oki Data’s famous "OKIDATA" trademark.
On August 8, 2000, Respondent registered the disputed domain name. Entry of the URL <1800okidata.com> reverts to a page indicating the website is under construction.
Complainant’s counsel has sent two cease and desist letters to Respondent by various delivery methods. Respondent has not responded.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the "OKIDATA" trademark, and that it is exactly the same as Complainant’s toll free number customer service number. Complainant also contends that the Respondent has no legitimate interest in or business purpose for the disputed domain name, and that Respondent has parked the domain name, which resolves to a site "under construction." Respondent also allegedly has registered and is using the disputed domain name in bad faith, because it is precluding Complainant from using a domain name that corresponds to Complainant’s trademarks and customer service number, and Respondent appears to have no bona fide business purpose.
Respondent has not responded to the Complaint and the allegations contained therein.
6. Discussion and Findings
Under Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Complainant has the burden of proving each of the following: (1) that the domain name is identical or confusingly similar to the complainant’s mark; (2) that the Respondent has no rights or legitimate interests in the domain name; and (3) that the Respondent registered and is using the domain name in bad faith.
A. The disputed domain name is identical or confusingly similar to the Complainant’s mark
The evidence shows that the Complainant clearly has rights in a family of registered trademarks incorporating "OKIDATA." Additionally, Complainant owns and uses a toll free customer service number, 1 800 OKIDATA. Complainant selected this phone number for its customer support center because it is the most obvious and easiest number for its customers to remember since it comprises Complainant's "OKIDATA" trademark.
Other decisions under the Policy have found that domain names containing a combination of 1 800 and the Complainant’s trademark were confusingly similar to Complainant’s mark. See The Rockport Co. LLC v. Powell, WIPO Case No. D2000-0064 (April 16, 2000) (<1800rockport.com> confusingly similar to Complainant’s "ROCKPORT" trademarks); RFI Financial, Inc. v. Chen, WIPO Case No. D2001-1242 (December 11, 2002) (<1800redroof.com> confusingly similar to Complainant’s "RED ROOF" trademarks); Reuters Ltd. v. "Domain for Sale", WIPO Case No. D2000-1110 (November 8, 2000) (<1800reuters.com> confusingly similar to Complainant’s "REUTERS" trademarks).
The disputed domain name, <1800okidata.com>, is identical to Complainant’s toll free customer service number, and clearly contains Complainant’s registered trademark, "OKIDATA." I find that the disputed domain name is identical or confusingly similar to Complainant’s mark and toll free customer service number.
B. Respondent does not have any rights or legitimate interests in the domain name
Respondent has submitted no evidence of any legitimate interest in the disputed domain name. There is nothing to suggest a relationship between Respondent and Complainant. I find that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Respondent has registered and has used the domain name in bad faith
Under 15 USC §1072, registration of the mark "OKIDATA" constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name. I find that the mark was registered in bad faith.
From the beginning of the Policy, many previous decisions have held that Respondent’s inactivity with respect to the domain name weighs in favor of finding bad faith, particularly where Respondent has no bona fide use for the domain name and simply is precluding Complainant from using a domain name that corresponds to Complainant’s mark. See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000), and cases citing same. This case follows that line. I find that the disputed domain name is being used in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules for Uniform Domain Name Dispute Resolution Policy, I find that Complainant has satisfied all of the required elements. I hereby grant Complainant’s request for a transfer of the domain name <1800okidata.com> to the Complainant. Registrar, Abacus America Inc., d.b.a. Names4ever.com, is directed to transfer the domain name.
Sandra A. Sellers
Dated: June 16, 2002