WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oki Data Americas, Inc. v. MTI, Steven Orrange
Case No. D2001-0790
1. The Parties
The Complainant is Oki Data Americas, Inc., 2000 Bishops Gate Road, Mount Laurel, New Jersey 08054-4620, U.S.A.
The Respondent is MTI, Steven Orrange, 2590 Shell Road, Georgetown, TX 78628, U.S.A.
2. Domain Name and Registrar
The domain name at issue is <okidata.net>. The registrar is Register.com in New York, NY, U.S.A.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on June 14, 2001, and in hardcopy on June 18, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
On June 18, 2001, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant. On June 20, 2001, the Center sent to the registrar a request for verification of registration data. On the same day, the registrar confirmed that it is the registrar of the domain name in dispute (the "Domain Name") and that it is registered in the Respondent's name.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on June 28, 2001, sent to the Respondent, with a copy to the Complainant, the Complaint and a Notification of Complaint and Commencement of Administrative Proceeding. This notification was sent by the methods required under Paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is June 28, 2001.
The Center notified Respondent that the last day for submitting a Response to the Complaint was July 17, 2001. The Center never received a Response. On July 19, 2001, the Center notified the Parties of the Respondentís default.
On August 3, 2001, WIPO appointed the administrative panel (the "Panel"). The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the original date scheduled for the issuance of the Panelís decision was August 17, 2001.
4. Factual Background
Complainant, Oki Data Americas, Inc., is a manufacturer and seller of computer peripherals and accessories. The mark OKIDATA is a federally registered trademark in the United States. The mark is owned by Oki Electronic Industry Co., Ltd. and exclusively licensed to Complainant.
Complainantís official website is connected to the domain name <okidata.com>.
Respondent, MTI, Steven Orrange, registered the Domain Name <okidata.net> on February 3, 2000.
5. Partiesí Contentions
Complainant contends as follows:
Complainant is engaged in the development, manufacture and sale of a full line of computer programs, printers, facsimile machines, computer peripherals and accessories. Complainant is a global leader in the manufacture and sale of computer related products.
Since December 15, 1972, the OKIDATA mark has been used continuously in the United States and around the world by Complainant and related parties in association with computer related products. The OKIDATA mark is registered on the Principal Register in the U.S. for computer programs, printers and parts thereof.
The mark OKIDATA is owned by Oki Electric Industry Co., Ltd. Complainant has an exclusive license to use the mark OKIDATA and to enforce rights in the mark in the United States.
Respondent registered the Domain Name on February 3, 2000. On October 12, 2000, after Complainant learned about the registration, Complainantís counsel faxed Respondent a cease and desist letter. This initial communication was followed by a conversation between Complainantís counsel and Respondent, during which Respondent agreed to phase out the website and transfer the Domain Name to Complainant. Subsequently, Respondent sent Complainant a letter indicating that it would transfer the Domain Name to Complainant.
Respondent has failed to transfer or cancel the Domain Name. Instead, Respondent has parked the Domain Name, in effect preventing Complainant from registering the OKIDATA mark under the .net top level domain. Because Respondent has parked the Domain Name, Complainantís customers may incorrectly believe that Complainantís website is not functioning.
Respondent is not a licensee of Complainant and it was never authorized by Complainant to use Complainantís mark. Respondent is aware that it has no rights or legitimate interest in the Domain Name. It is not registered to do business under any name similar to the Domain Name.
In sum, Respondent is using the Domain Name that is identical to Complainantís protected mark, and such use is in bad faith. Respondentís actions have served to intentionally divert potential customers from Complainantís website. Because Respondent has no legitimate interest or rights in the Domain Name, it is violating Complainantís trademark rights.
Respondent failed to submit a Response to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The mark OKIDATA is a federally registered trademark in the United States. The evidence presented by Complainant demonstrates that Complainantís mark OKIDATA has been used extensively by Complainant for approximately 30 years. The Panel is convinced that the mark is well known in the computer products field. The Panel thus finds, given the totality of unrebutted evidence, that the mark OKIDATA is protected by federal and common law.
The Panel next looks to whether the Domain Name is confusingly similar to Complainantís mark. The Panel finds that the Domain Name <okidata.net> is identical to Complainantís mark OKIDATA and is thus confusingly similar to Complainantís mark.
The standard of confusingly similar has been reached and the requirement of Paragraph 4(a)(i) is met.
C. Rights or Legitimate Interests of the Respondent
Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name. The Domain Name is identical to Complainantís mark and the Complainant did not grant the Respondent a license to use Complainantís mark. Thus, a prima facie case has been made by Complainant.
Respondentís failure to respond to the Complaint allows the inference that the evidence would not have been favorable to Respondent. Accordingly, the Panel finds that Respondent has no legitimate interests in the Domain Name. Therefore, the requirement of Paragraph 4(a)(ii) is met.
D. Bad Faith
Complainant alleges that Respondent registered and used the Domain Name in bad faith. In fact, Respondent had knowledge of Complainantís mark after Complainant sent Respondent a cease and desist letter. Upon receiving the letter, Respondent agreed to phase out the Domain Name and transfer it to Complainant. However, instead of transferring the Domain Name to Complainant as promised, Respondent has parked the Domain Name such that the <Okidata.net> name does not resolve any content. Thus, it is clear from Respondentís refusal to transfer the Domain Name and its unwillingness to make constructive use of the Domain Name, that Respondent has acted in bad faith.
The Panel finds that Respondentís registration and use of the Domain Name was in bad faith and thus, the requirement of Paragraph 4(a)(iii) is met.
The Panel, having found that the Domain Name is identical and confusingly similar to Complainantís mark, that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name has been registered and is being used in bad faith, finds in favor of Complainant.
The Panel directs that the Domain Name <okidata.net> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: August 17, 2001