WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Int. Lasy Ltd. v. Cameleon Informatique et Robotique Inc.
Case No. D2003-0701
1. The Parties
The Complainant is Int. Lasy Ltd, Maienfeld, of Switzerland, represented by Maassen, Wack, Möller & Knabel, Germany.
The Respondent is Cameleon Informatique et Robotique Inc., Quebec, of Canada, represented by Lapointe Rosenstein, Canada.
2. The Domain Name and Registrar
The disputed domain name <lasy.com> is registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 5, 2003. On September 9, 2003, the Center transmitted by email to Network Solutions, Inc., a request for registrar verification in connection with the domain name at issue. On September 15, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the Registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2003. The Response was filed with the Center on October 10, 2003.
The Center appointed Gunnar Karnell as the sole panelist in this matter on October 17, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On September 25, 2003, the Complainant by e-mail added to its Complaint a supplemental filing. In view of its findings about the material issues of the case, the Administrative Panel chooses to disregard it.
Also with regard to such findings, the Panel will make only short presentations of the parties’ contentions, excluding some arguments and related material found to be of no consequence to the outcome of the proceedings.
4. Factual Background
The Complainant is a producer and supplier of education materials, e.g. construction sets. By an assignment on June 26, 1989, it acquired the rights to the trademark "LASY" as registered under number 224,461 on December 2, 1977, in Canada, for construction toys. In addition to rights related to this registration, the Complainant has referred to a number of other trademark registrations, subjected to exclusive licences held by the Complainant.
The domain name at issue was registered by the Respondent on January 14, 1997.
The Complainant has requested that the domain name <lasy.com> be transferred to the Complainant.
The Respondent has requested that the Panel disallow the remedy.
5. Parties’ Contentions
The domain name is identical to the trademark LASY to which the Complainant holds the exclusive rights, and its present use by the Respondent creates confusion among customers to the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain name. It is the former authorised dealer of Int. Lasy Ltd. in Canada, but as of February 1, 2003, there is no contractual relationship binding the parties together in any respect and, since then, the Respondent is neither allowed to distribute LASY products nor is it able to do so. There are no more deliveries from the Complainant. The Respondent does not possess any brand name, trademark or products with the name LASY or similar to that name.
The domain name was registered and is being used in bad faith. The Respondent offers on the "www.lacy.com" site products of the Complainant with the LASY trademark, knowing that it is not allowed to distribute these products nor has been able to do so since February 1, 2003. On its domain, the Respondent appears as an authorised dealer by a link "How to order," providing contact information of its own company Camelon Inc. Boucherville, Canada, thereby confusing Internet users. The Respondent’s continued use of the domain with its display of LASY products but unable to provide a dealer’s services, as well as its linking to a competing company (Camelon Inc.) can only be explained as aimed to disrupt the business of the Complainant.
The business relationship between the parties begun at least eight years ago, in 1995, and then between the Respondent and the Complainant’s predecessor, the Swiss company Intatoy AG, which later changed its name to Int. Lasy Ltd. The Respondent has been doing business with the Complainant in such a good relationship that in June 2001, the Respondent was supposed to acquire the Complainant’s company. However, Mr. Peter Larws, founder and President of the Complainant and of its predecessor Intatoy AG, died the night before the execution of all the transfer documentation. Together the parties developed various products, combining their respective technology, finally on the basis of two agreements, a patent licence agreement of February 1, 2000, and an exclusive distribution agreement of February 3, 2000. The Respondent is still the exclusive licensee of various Complainant’s patented products in Canada, the US and Mexico. It was Mr. Peter Larws who, in 1997, in the course of the business relationship between Intatoy AG and the Respondent, asked the Respondent to register the domain name and to take care of the website.
The Respondent admits that the distribution agreement with the Complainant is terminated but refutes that this is the case with the patent licence agreement. The continued status of this agreement makes it obvious that the Respondent has legitimate rights in <lasy.com>.
6. Discussion and Finding
A. Identical or Confusingly Similar
The domain name <lasy.com> is identical to the trademark LASY held by the Complainant, as mentioned here above under 4.
B. Rights or Legitimate Interest
For reasons given here below under C, the Panel leaves out of its consideration what rights or legitimate interests, if any, there may be on the part of the Respondent.
C. Registered and Used in Bad Faith
The Policy, in its Paragraph 4(a) clearly states that this administrative procedure is only available for disputes concerning an alleged abusive registration that meets each of the criteria there mentioned. Among these is the criterion that the domain name must be shown to be both registered in bad faith and used in bad faith. The panel finds that the registration part of the criterion has not been proven in this case.
The registration of the domain name at issue took place at a time when the parties were interrelated to each other in business co-operation. The parties agree on this. The contentions of the Complainant are all directed towards the present situation, after the termination of the business relationship with the Respondent in February 2000. The issue about bad faith at the time of registration of the domain name has not been addressed by the Complainant. The Panel – having compared the assertions of the parties – is not convinced of any bad faith on the part of the Respondent at the time of registration of the domain name. This stated, there is no need for the Panel to determine if the domain name is presently used in bad faith or not, nor to decide on any rights or legitimate interest of the Respondent in respect of the domain name.
For all the foregoing reasons, the Complaint is denied.
Dated: October 23, 2003