national arbitration forum

DECISION

Ricom, Inc. v. Ricom

Claim Number:  FA0410000348012

PARTIES

Complainant is Ricom, Inc. (“Complainant”), represented by Gregory J. Marcot, of Kring & Chung, 38 Corporate Park, Irvine, CA 92623-9782.  Respondent is Ricom  (“Respondent”), 31808 Kennet Street, Hayward, CA 94544.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ricom.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 25, 2004.

On October 22, 2004, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <ricom.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On October 29, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ricom.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 2, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <ricom.com> domain name is identical to Complainant’s RICOM mark.

2. Respondent does not have any rights or legitimate interests in the <ricom.com> domain name.

3. Respondent registered and used the <ricom.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has been conducting business under the business name “Ricom” since August 1997.  In May 1998, Complainant formally registered the domain name <ricom.net> and has been operating a website through this domain name ever since.  In February 2003, Complainant filed a service mark registration application with the United States Patent and Trademark Office (“USPTO”) for its mark RICOM; however, Complainant allowed the application to lapse and it was deemed abandoned by the USPTO in March 2004. 

Respondent registered the <ricom.com> domain name on April 26, 1997, before Complainant even existed as a business entity.  The domain name resolves to a website displaying nothing but the term “ricom.com” in bold letters.  Complainant has previously offered to purchase the disputed domain name from Respondent for $5,000.  Respondent rejected this offer, but has offered to sell the disputed domain name for no less than $20,000.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Respondent’s registration of the disputed domain name predates any use of the RICOM mark by Complainant by several months.  Thus, the Panel holds that Complainant has not shown sufficient rights to bring a claim pursuant to Policy ¶ 4(a)(i) because Complainant’s initial use of the mark does not predate Respondent’s registration of the disputed domain name.  See Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) finding that any enforceable interest that Complainant may have in its common law mark did not predate Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied; see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration of the domain name”.

Since Complainant failed to establish standing pursuant to paragraph 4(a)(i) of the Policy, it is unnecessary to address paragraphs 4(a)(ii) and (iii) of the Policy.  See Creative Curb v. Edgetec International Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because Complainant must prove all three elements under the Policy, Complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the petition for relief shall be DENIED without prejudice to refiling.

Sandra Franklin, Panelist

Dated:  December 16, 2004

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