WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Farmaka s.r.l. v. Robert Capps
Case No. D2001-1048
1. The Parties
The Complainant is Farmaka s.r.l. whose address is Via Vetreria, 22070 Grandate Como, Italy. The Complainant is represented by Dr. Ron Nedd, Kevis Rejuvenation Programs, Inc, 246 S. Robertson Boulevard, Beverly Hills, CA, United States of America, 90211.
The respondent is Robert E. Capps whose postal address is PO Box 1634, Folsom, CA, United States of America, 95762. The respondent is representing himself in this proceeding.
2. The Domain Name And Registrar
The domain name in dispute ('Domain Name') is <kevis.com>.
The Domain Name was originally registered with Network Solutions Inc on November 22, 1998, but was transferred to Tucows Inc on November 21, 2000.
The Registrar with which the Domain Name is registered is currently Tucows, Inc of 96 Mowat Avenue, Toronto, ON M6K 3M1 Canada.
3. Procedural History
Hard copies of the Complaint were filed on August 21, 2001, and an electronic format was filed on August 23, 2001. On August 22, 2001, the Center transmitted acknowledgment of receipt of complaint. On August 27, 2001, the Center transmitted a request for register verification to Tucows, Inc in connection with this case. On August 28, 2001, Tucows Inc. sent via e-mail to the Center a verification response confirming that the Respondent is the registrant.
On September 3, 2001, the Center verified the Complaint satisfied the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the 'Policy'), the Rules for Uniform Domain Name Dispute Resolution Policy (the 'Rules') and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the 'Supplemental Rules').
On September 3, 2001, the Center formally commenced this proceeding and sought to notify the Respondent that its response would be due by September 23, 2001. The Response was received on September 21, 2001.
On September 25, 2001, a supplemental filing was lodged by the Complainant and on October 4, 2001, a supplemental filing was lodged by the Respondent.
On October 11, 2001, the WIPO Arbitration and Mediation Center notified the parties that an Administrative Panel had been appointed consisting of a single member: Professor Michael Charles Pryles, who had submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
4. Factual Background
The Complainant, an Italian domiciled company, owns the trademark 'kevis' registered in the United States Patent and Trademark Office. The products offered by the Complainant under the trademark are for hair treatment, namely shampoos, conditioners, and lotions to prevent hair loss. The trademark was issued on July 11, 1989, to an Italian Corporation called Medimport International s.r.l.. It was merged into Farmaka s.r.l. and the latter became the registered owner of the trademark in 1993.
The Complainant operates in the United States of America through a distributor (Mr. Brian Reichenberg of Kevis Rejuvenation Programs, Inc).
The Respondent had originally registered the Domain Name with Network Solutions Inc on November 22, 1998, and transferred the Domain Name to Tucows Inc November 21, 2000.
5. Parties’ Contentions
Domain Name and Registered Trade Mark Confusingly Similar (paragraph 4(a)(i) of the Policy)
The Complainant asserts it has a trademark over the phrase 'kevis' registered on July 11, 1989. The Complainant provides supporting material for this registration at Annexure 3 of the Complaint.
The Respondent contends that at the date of registration of the Domain Name on November 22, 1998, no trademark belonging to the Complainant for the phrase 'kevis' existed.
Neither the Complainant nor the Respondent have made any submissions as to the identicalness or similarity or lack thereof of the Domain Name and the 'disputed' trademark.
Legitimate Interests or Rights in the Domain Name (paragraph 4(a)(ii) of the Policy)
The Complainant submits that it has 'never given the Respondent any rights in [the trademark] or authoris[ed] [its] use' (paragraph 12 of the Complaint). The Respondent has made no submissions to rebut this contention.
Registration in Bad Faith (paragraph 4(a)(iii) of the Policy)
The Complainant contends that through a course of dealing with the Respondent, evidenced in Annexures attached to the Complaint, the Respondent sought compensation for the sale/transfer of the Domain Name well above the Respondent's cost in having the Domain Name originally registered.
The Complainant submits that:
(a) the Domain Name was registered and acquired primarily for the purpose of selling to either the Complainant or one of its competitors, for valuable consideration in excess of the Respondent's out-of-pocket costs;
(b) the Respondent had not used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services;
(c) the Respondent had not demonstrated a legitimate non-commercial or fair use of the Domain Name; and
the Respondent has dealt with the Domain Name in bad faith.
The Respondent asserts that his reason for having the Domain Name registered was for a 'military friend [called] Kevis'. Although no evidence is provided by the Respondent validating the identity of this claimed person. The Respondent further claims that the '[Domain Name] was never solicited for sale to anyone.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
Before discussing the application of the Policy to the facts of the case, it should be noted that the Domain Name was originally registered on November 22, 1998. The Policy was approved by ICANN on October 24, 1999. This means that the Domain Name was registered before the Policy approval by ICANN. However, the Registrar has the right to revise the terms and conditions of the agreement and a customer can signify assent to any such revisions merely by continuing to use the Registrar's services. Further, the Respondent transferred the Domain Name to Tucows Inc, on November 21, 2000. The event of transfer had the effect of incorporating the Policy. The Respondent has made no submissions in this regard.
Domain Name Identical / Confusingly Similar
Firstly, it is necessary for this Panel to determine the issues relating to the validity of the trademark as claimed by the Complainant but disputed by the Respondent. The Panel finds that there is ample evidence a trademark for the phrase 'kevis' existed from 1989. While the identity of the registrant of the trademark was different to the Complainant when the trademark was initially registered, the Panel is satisfied that the Complainant is the current owner of the trademark.
Having found that the Complainant owns a registered trademark for the phrase 'kevis', there can be no doubt that the Domain Name is identical and/or confusingly similar to the Complainant's registered trademark.
No Rights or Legitimate Interests
I accept the Complainant's submission that no rights or license have been given to the Respondent.
The Respondent claims that his reason for having the Domain Name registered was in part for a 'military friend [called] Kevis'. I am unable to accept this submission as no evidence is put by the Respondent to support his claim.
I accordingly find the Respondent has no rights or legitimate interests in the Domain Name.
Domain Name Registered and used in Bad Faith
Despite the Respondent's contention that the Domain Name was not offered for sale, the Complainant has produced evidence that it was, in fact, offered for sale. There is a copy of a site on <namefinder.com> which states that the Domain Name 'is For Sale'. There is also correspondence from an attorney, apparently acting for the Respondent, stating that the price for the Domain Name is $70.00, if a copy of the Federal Trademark Registration is provided, or otherwise the price is $20,000. Evidence of registration was produced to the Respondent's attorney but, despite his earlier statement that the Respondent was willing to transfer the Domain Name for $70.00, in later correspondence the Respondent's attorney described this amount as 'insufficient consideration'.
I am satisfied that the Respondent has shown bad faith registration and use of the Domain Name. The Respondent has no legitimate rights or interests in the Domain Name and is demanding the payment of substantial consideration to transfer the name which is, after all, identical to the Claimant's trademark.
I find that in view of the above the Domain Names should be transferred to the Complainant.
Professor Michael Charles Pryles
Dated: October 18, 2001