DECISION

Savin Corporation and Ricoh Corporation v. Kent S. Schisler

Claim Number: FA0407000294206

PARTIES

Complainants are Savin Corporation and Ricoh Corporation (“Complainants”), represented by David A. Einhorn, of Anderson Kill & Olick, P.C., 1251 Ave. of the Americas, New York, NY 10020.  Respondent is Kent S. Schisler (Respondent”), P.O. Box 447, Herndon, VA 20172-0447.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain names at issue are <savinusa.com > and <ricohamerica.com >, registered with Network Solutions, Inc.

PANEL

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

Honorable Sir Ian Barker, Q.C.

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 8, 2004; the Forum received a hard copy of the Complaint on July 12, 2004.

On July 9, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <savinusa.com > and <ricohamerica.com > are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names.  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 July 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 5, 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@savinusa.com and postmaster@ricohamerica.com by e-mail.

A Response was received by the Forum in hard copy on August 4, 2004.  It was not signed by the Respondent.  He forwarded an email to the Forum on August 6, 2004, which confirmed, but did not repeat, the hard-copy Response: it made the necessary certifications.  This document does not appear to bear a signature.  Additional Submissions were received from the Complainants on August 9, 2004 and from the Respondent on August 11, 2004.

On August 17, 2004, the Respondent forwarded unsolicited further material for consideration by the Panel. The information was not submitted in accordance with the rules and was not considered by the Panel.

On August 13, 2004, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Sir Ian Barker, QC as Panelist.

RELIEF SOUGHT

Complainants request that the domain names be transferred from Respondent to Complainant. 

FACTUAL MATTERS

The First Complainant, Savin Corporation (“Savin”) owns numerous United States and foreign registrations for trademarks for the mark ‘SAVIN.’ The marks are for a large range of office machines such as photocopiers, facsimile machines and associated products.

The Second Complainant, Ricoh Corporation (“Ricoh”) is the United States sales and marketing unit of a Japanese entity, Ricoh Company Ltd (”RCL”), which holds numerous United States trademark registrations for the mark ‘RICOH.’  The Second Complainant is a licensee for those marks. The marks are in respect of a wide variety of office equipment, associated products and supplies. 

Savin and Ricoh are both subsidiaries of RCL and distribute their products throughout the United States via a network of authorized dealers and branches.

The Respondent is the CFO/General Manager of the Madden Company (“Madden”) which had been an authorized dealer of Savin products under a Dealer Agreement with Savin which expired on March 31, 2004 and which has not been renewed.  The terms of the Dealer Agreement are comprehensive and do not need to be repeated, other than for the Panel to note the following:

In terms of the Dealer Agreement, upon termination, Madden was inter alia  

a)         to “… discontinue the use of Savin brand trademarks, trade names, labels and copyrights and materials and signs bearing the name Savin or any trademark or trade name of Savin, and will remove such names and trademarks from letterhead, stationery and other forms used by the Dealer.”

            … (to) “…

(b)        to discontinue immediately any use of Savin trademarks and service marks which, in the sole judgment of Savin is unconnected with … the business advertising or public relations policy of Savin or is misleading or confusing as to the rights or status of Dealer …”.

Madden claims the current right under the Dealer Agreement to sell off inventory and demonstration models to Respondent.  The Dealer Agreement refers only to Savin products with no mention of Ricoh or its products.

Complainants sent Respondent, through their lawyer, a ‘cease and desist’ letter on April 28, 2004.  There was no response to that letter. 

The disputed domain names were registered by Respondent on April 5 and  6, 2004, after the Dealer Agreement had been terminated.

PRELIMINARY ISSUES

1. The Respondent has not complied with ICANN Rule 5(a) and Rule 3(b)(viii) in that he failed to send the Response to the Forum electronically within the allotted time and he failed to sign the Response.  The Panel has decided to consider his Response, despite these deficiencies.  To rule the Response inadmissible for these reasons would be “… an extreme remedy not consistent with the basic principles of due process.” See Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum February 21, 2002.)  However, lack of a signature on the hard-copy response and on the email certifications of the accuracy and veracity of the Response, does go to the weight to be accorded to the document. 

2. The Panel has given thought as to whether this dispute is outside the scope of the UDRP because of the reliance by Savin on Respondent’s position under the Dealer Agreement between Savin and Madden. The Panel is mindful that his role is not to adjudicate in a business dispute.  However Respondent does not query the fact that the Dealer Agreement was terminated by Savin.  Nor does he dispute the clauses in the Agreement about the effects of termination.  Accordingly, the Panel is justified in considering the terms of this Agreement to determine whether Respondent can claim a bona fide interest or right, sufficient for him to use the Complainant Savin’s trademarks in the disputed domain names.  Whether he is entitled to use his website as he does, advertising the sale of goods manufactured by Complainants, does not need to be decided by this Panel.  The Agreement has no reference to Complainant Ricoh.

3. Respondent refers vaguely in his Response and Additional Submission to civil and criminal proceedings which he has initiated.  The Panel pays little attention to this allegation because Respondent has neither supplied a certified copy of his claim(s) as filed in a Court nor any official reference giving the name of the Court(s), the date of filing and the record number.  Nor does he specify the prosecuting authority in the criminal proceedings.  Without such information, the Panel is unable to assess whether the same matters traversed in the Court proceedings are the same as those covered by the Complaint.

4. The Panel considers that it is appropriate for these two Complainants to seek transfers of domain names from the same Respondent.  Both Complainants have an interest in both disputed domain names as subsidiaries of RCL.  See Gruner and others v Savior Baby, D2000-1741 (WIPO February 21, 2001) provides authority.  Respondent did not submit otherwise.

PARTIES’ CONTENTIONS

A. Complainants

General

As a licensee of the RICOH Marks, Ricoh properly may seek transfer of the domain name <ricoamerica.com>.  See FDNY Fire Safety Educ. Fund, Inc. v. Roger Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003).

Ricoh also may seek transfer of the respondent’s domain name based on its common law rights in the mark RICOH.  See Toyota Motor Sales, U.S.A., Inc., v. JT4WD’s, D2002-0392 (WIPO July 10, 2002) (permitting a US subsidiary of a Japanese parent that held all relevant US trademark registrations to seek transfer of <landcruiser.net>).  In JT4WD’s, the registered trademarks were held by the Japanese corporate parent.  However, Complainant, as the US importer and distributor for its Japanese parent’s Toyota land cruisers, had used the mark LAND CRUISER in the US since 1958.  Based on this long use of the mark and its history of substantial advertising, promotion and sales under the mark, Complainant had standing to seek the domain name <landcruiser.net>.

Ricoh uses the RICOH mark to import, distribute and sell RCL products throughout the US.  Over several decades, Ricoh has spent substantial sums in advertising and promoting its goods and services under the RICOH mark.  The company has annual sales in excess of $2.8 billion.

Savin has registered its mark SAVIN as the domain name <savin.com> and uses that domain name in connection with a website.  Similarly, Ricoh has registered the domain name <ricoh-usa.com> and uses that domain name in connection with a website.

Complainants use their respective websites to market their products and service and to promote the goodwill associated with their brand names.

Respondent has represented that he is the CFO/General Manager of The Madden Company (“Madden”), a former authorized dealer of Savin products.  On March 31, 2004, Madden’s dealer agreement expired.  That agreement had permitted Madden a limited license to use the Savin marks but not those of Ricoh.  The Dealer Agreement was neither renewed nor extended.  The terms of the Dealer Agreement (quoted earlier) state that, upon expiration, Madden shall cease all use of the Savin marks.

Respondent currently uses the domain names with websites that offer Savin and Ricoh products for sale.  Respondent offers these products in competition with Savin and Ricoh authorized dealers.  The pages from his websites show that he uses those websites, at domains using Complainants’ marks in order to divert customers away from authorized dealers.  The site at <savinusa.com> states that “SAVIN USA Copiers, Printers & Fax” sells “genuine SAVIN equipment” and “the best part about dealing with us is that you don’t have to pay Authorized Dealer prices!”  Similarly, the <ricohamerica.com> site states that “RICOH America – Copiers, Printers & Fax” sells “new ‘demo’ equipment” for thousands less than an Authorized Dealer.”

Confusingly Similar

The disputed domain name <savinusa.com> is confusingly similar to Savin’s registered trademarks.  Savin holds valid and subsisting federal trademark registrations for ‘Savin’ in the United States.  Savin first registered its SAVIN mark in 1967.

Similarly, the disputed domain name <ricohamerica.com> is confusingly similar to the Ricoh Marks.  Since 1962, Ricoh has used the mark RICOH as licensee for RCL’s registered RICOH Marks.  The use has been shown through its own importation, distribution and sale of goods and through its dealership network in the US.

A domain name need not be identical to a complainant’s mark in order to be confusingly similar.  See Savin Corp. v. Mowbray, FA 103869 (Nat. Arb. Forum March 1, 2002) (finding <savincity.com> to be confusingly similar to SAVIN).  A domain name that contains the identical mark of the Complainant is confusingly similar to the Complainant’s mark even if the entire domain name is not identical to the mark.  Only essential identity is needed to establish confusingly similarity.

Use of the complainant’s trademark in connection with a general term does not avoid the confusing similarity created by the use of the complainant’s trademark.  See Savin Corp. v. Copier Dealers, Inc., FA 155903 (Nat. Arb. Forum July 9, 2003).

Placing a geographic term next to the complainant’s mark in a domain name does not serve to distinguish it from that mark.  See Neusiedler Aktiengessellschaft v. Kulkarni, D2000-1769 (WIPO Feb. 5, 2001) (holding that the addition of the initials “usa” did not distinguish the domain name <lipostabilusa.com> from the mark LIPOSTABIL). See also Broadcom Corp. v. Ayers Int’l Group, Inc., FA 112562 (Nat. Arb. Forum July 24, 2002) and Smith & Fong Co., Inc. v. Plyboo Am. Inc., FA 156804 (Nat. Arb. Forum June 10, 2003).

Bona Fide Use or Legitimate Interest

Registering a domain name containing a competitors’ mark for use in competing with the mark owner does not constitute a bona fide use.  See Clear Channel Commun., Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003).

Respondent’s employment with a former authorized dealer of Savin products does not afford him any rights in the Savin Marks (nor the Ricoh Marks) See Magnum Piering, Inc. v. The Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that even where dealer registered several domain names prior to termination of the dealer agreement, the former dealer lacked a legitimate interest in the domain names as they had been registered without authorization from the trademark holder); see also Hydraroll Ltd v. Morgan Corp., FA 94108 (Nat. Arb. Forum Apr. 14, 2001) (holding the same where the dealer registered the domain name amidst a dispute over whether its dealership agreement was terminated properly);  see also Sagmel, Inc. v. Kortest Co., Ltd, FA 97359 (Nat. Arb. Forum July 3, 2001) (stating that panels consistently transfer domain names from dealers back to trademark owners where the domain name incorporates the owner’s trademark).

Respondent did not register the domain names at issue until after Madden ceased being an authorized Savin dealer.  He must have registered the domain names using the SAVIN and RICOH Marks with full knowledge of Savin’s and Ricoh’s rights in those marks and with full knowledge that he had no right to use those marks.  He currently uses those domain names for websites that sell products that compete with Savin and Ricoh authorized dealers.

Respondent’s use of domain names that are highly similar to Complainants’ trademarks with the intent and result of diverting users from Complainants to Respondent, does not establish a bona fide commercial use.  Savin Corp. v. Mowbray, supra; Backstage Fashion, Inc. v. Back Stage, Inc., FA 100135 (Nat. Arb. Forum Nov. 5, 2001) (“Using a domain name identical to Complainant’s service mark with the result of diverting potential customers from Complainant to Respondent is not a bona fide offering of goods.”).  See also Gorstew Limited v. Regency Travel, FA 94921 (Nat. Arb. Forum July 6, 2000).

In this case, Respondent’s current use of the domain names at issue is an effort to divert consumers of business machinery away from Complainants and their authorized dealers and to itself.  This type of use cannot constitute a legitimate interest under UDRP ¶4(a)(ii).  It is a bad faith use of the domain names under UDRP ¶ 4(b)(iii) & (iv).

Respondent claims to use the marks SAVIN and RICOH to sell Savin and Ricoh office machinery and products  Neither Respondent nor Madden was an authorized dealer of Savin or Ricoh products at the time Respondent registered the domain names at issue.  As in Gorstew, Respondent’s sale of Savin and Ricoh products, under domain names confusingly similar to the SAVIN and RICOH marks, does not establish a legitimate interest in those domain names.

Respondent’s use of its domain names is neither legitimate noncommercial use nor a fair use.  In Savin v. Rayne, the court stated that use by another of the Savin Marks for Websites would only be legitimate if the sites were used solely for consumer education and commentary, and not for an commercial purpose. (Savin v. Rayne, 2001 U.S. Dist. Lexis 20581 at 24).  Respondent’s use, however, is clearly commercial in nature.

Bad Faith

Respondent is not an authorized dealer of SAVIN or RICOH products.  Any right to use the SAVIN Mark that he could have claimed through Madden has expired. Neither he nor Madden ever had any right to use the RICOH Marks.  His subsequent registration of the domain names at issue reflects his bad faith intent to pass-off himself or his business as affiliated with Savin and Ricoh.  He uses the domain names to attract customers of Savin and Ricoh products to his business’ website for commercial gain.  This use is neither legitimate or in good faith.

Respondent has expressed his intent to compete with Savin’s and Ricoh’s authorized dealers.  His intent is to use these Websites to divert customers away from the Complainants and their authorized dealers.  Respondent, as a former Savin dealer, was well aware of the SAVIN and RICOH Marks.  He nonetheless intentionally selected domain names confusingly similar to those marks.  The decision further evidences his intent to trade on the goodwill that consumers recognize the SAVIN and RICOH marks to represent.

B. Respondent’s Submissions

In his Response, Respondent claimed that Complainants were taking retaliatory action because he had established a website, <www.thisisjustice.com>, critical of Complainants. Respondent denies that the disputed domain names are confusingly similar to Complainants’ marks and claims that most domain name dispute decisions have been against persons wishing to sell a disputed name for profit. Respondent is not in that category.

The sites were established to provide service to customers wanting to buy ‘demo’ and used Savin and Ricoh equipment. Respondent is not in competition with Complainants, since they sell new equipment only, which Respondent does not.

Respondent is not using Complainants’ marks nor does he express or imply in the website that he is in any way connected with the Complainants or is an authorized dealer. Respondent is no longer limited to a sales territory and can sell and service Savin and Ricoh equipment anywhere in the world. Respondent does not use Complainants’ logos and specifically states that he will refer visitors to authorized dealers.  Respondent is entitled to sell Savin and Ricoh equipment, legitimately purchased when Madden was an authorized dealer.

Respondent seeks a finding of reverse domain name hijacking under Rule 15(e), claiming that Complainants have used the Policy in bad faith to deprive him of the disputed domain names to which he has rights.

The fact that his company was an authorized Savin dealer for 25 years gives him the right to continue to sell equipment legitimately purchased.

C. Parties’ Additional Submissions

The parties’ additional submissions added little to their earlier pleadings.

Complainant submitted, inter alia:

(a) Respondent admitted registering the disputed domain names to divert customers looking for Ricoh and Savin equipment and that Respondent was selling these products through the domain names.

(b) Respondent admitted that it had now no relationship with Complainants.

(c) Respondent’s disclaimer in the text of his website does not excuse its use of Complainants’ marks nor Respondent’s bad faith registration and use of the names.  See State Bar of California v. eWebNational.com.Inc, FA 97137 (Nat. Arb. Forum June 14, 2001).

(d) Any right of the Respondent to sell off inventory products does not give him the right to register confusingly similar domain names.  See express Serv. Inc. v Personnel Plus, FA 112624, (Nat. Arb. Forum June 20, 2002).

(e) Bad faith by Respondent is shown by his admission that he registered the domain names and created the websites after Madden’s dealership had been terminated.

(f) Respondent admitted he never hand any dealership or dealings with Ricoh.

Respondent noted that each website has a statement at the top in red “READ THIS FIRST” which is followed by statements to the effect:

(a)   These are not the websites of Savin or Ricoh;

(b)    Savin and Ricoh do not endorse the website;

(c)   Respondent sells only ‘demo’ and used Savin and Ricoh equipment.

The termination of the longstanding dealership should be taken into account by the Panel.

Respondent denied bad faith and unauthorized use of Complainants’ trademarks.  Savin and Ricoh are still obliged to provide parts to a former dealer.  Untrue claims are being made by authorized dealers in the area about Respondent’s business. 

Respondent relied on an NAF decision about the domain name <savinsucks.com>. Savin Corporation v savinsucks.com, FA 103982, (Nat. Arb. Forum March 5, 2002).

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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

Complainant Savin has established rights in the SAVIN mark because of its registrations with the USPTO.  Complainant Ricoh is the licensee from the owner of the RICOH mark also registered with the USPTO.  Registration of a mark is prima facie evidence of validity. 

The <savinusa.com> domain name is confusingly similar to Complainant Savin’s SAVIN mark because the domain name fully incorporates the mark and merely adds the generic, geographic term “usa.”  See Oki Data Ams. Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusingly similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) and JVC Am. Corp. v. Cacafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by Respondent, <jvc-amercial.com>, is substantially similar to, and nearly identical to Complainant’s JVC mark).

The <ricohamerica.com> domain name is confusingly similar to the RICOH mark in which the Complainant Ricoh has rights as licensee, because the domain name fully incorporates the mark and merely adds the generic geographical term “America.”  See AXA China Region Ltd. v. KANNET Ltd, D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> was confusingly similar to Complainant’s CMGI mark).

The confusingly similarity of Complainant’s SAVIN and RICOH marks and the disputed domain names is heightened because both Respondent and Complainants are in the same industry, i.e. the provision of business machinery and parts and services, including photocopiers, printers and facsimile machines.  See Slep-Tone Entm’t Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (“likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry.”).

Legitimate Rights or Legitimate Interests

The disputed domain names take advantage of the goodwill associated with Complainants’ SAVIN and RICOH marks and therefore the use of the disputed domain name does not constitute a bona fide offering of goods or service pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). 

Respondent lacks rights and legitimate interests because the domain names resolve to commercial websites that take advantage of the goodwill associated with Complainants’ marks.  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting internet traffic to its own website; see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract internet users to its business, which competed with Complainant); see also Chip Merch., Inc. v Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Respondent is not commonly known by the <savinusa.com> and <ricohamerica.com> domain names and therefore lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(i).

Respondent’s status as a former employee of a former authorized dealer of Complainant’s SAVIN products provides Respondent no rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(i).  See Vinidex Pty. Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that as a former employee, Respondent knew or should have known Complainant’s mark was in use as an integral part of the corporate name and as a trademark and that Respondent understood the legitimate interests and rights of Complainant and, by contrast, its own lack of interests or rights.  This is sufficient for Complainant to establish that Respondent had no rights or interests in the domain name).

The essential fallacy in Respondent’s position is that, whatever right he may or may not have as a former Savin dealer to sell off inventory stock acquired during Madden’s dealership, he does not have the right to use Complainants’ marks in domain names which suggest an affiliation with or an endorsement from Complainants.  No other inference can be drawn from domain names which incorporate their registered marks plus a wide geographical expression such as ‘usa’ or ‘america.’ 

Two WIPO decisions exemplify this proposition.  They are also relevant under bad faith considerations.

In General Electric Company v Japan Inc., D2001-0410 (WIPO June 26, 2001) an experienced three-member panel held that a reseller of used GE power generation equipment could not use the domain name <japan-ge.com>. The panel acknowledged substantial judicial authority that suggests “fair use” rights for a reseller of used equipment which is the subject of a trademark.  However, this right is carefully bounded by the requirement that the reseller may not use the mark in a way that is likely to confuse consumers as to an affiliation between the retailer and trademark owner. The Panel followed Caterpillar Inc v Quin, D2000-0314 (WIPO June 14, 2000) where it was held that those seeking spare parts for Caterpillar equipment, would enter the site <caterpillarparts.com> expecting to encounter Caterpillar Inc or one of its authorized dealers and not a retailer trading in Caterpillar spare parts.

To similar effect is RT. Quaife Engineering Ltd. v. Luton, D2000-1201 (WIPO  Nov. 23, 2000) where Respondent registered <quaifeusa.com> after he had had disagreements with the holder of the registered trademark, Quaife. Like the Panelists in the General Electric case, the Panelists in Quaife had no hesitation in holding that the rights of the Respondent as a retailer of equipment gave him no rights to register a domain name which suggested a US affiliation with the UK firm of Quaife.  The parallels with the present case are clear. 

In respect of Respondent’s use of the RICOH mark in the disputed domain name <ricohamerica.com>, there is not even a vestige of plausibility, since Madden had no Dealer Agreement with Ricoh.

Registration and Use in Bad Faith  Policy ¶ 4(c)(i)

The Panel accepts that Respondent’s use of the domain names is an attempt to pass himself off as Complainants to sell used office equipment.  This is bad faith registration and use of the domain name pursuant to Policy s 4(c)(i).  See Monsanto Co. v. Deceptions, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent’s use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bergman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website).

Complainant further asserts that Respondent is using the <savinusa.com> and <ricohamerica.com> domain names to divert internet users, searching under Complainants’ SAVIN and RICOH marks, to his own commercial websites, where Respondent sells Complainants’ goods for his own commercial gain.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith because Respondent was using the confusingly similar domain name to attract internet users to its commercial website); see also Am. Online, Inc., v. Tencent Commun. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb., 23, 2000) (finding that Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods).

The Panel does not need to enquire into the right of Respondent to sell Complainant Savin’s used merchandise.  Presumably, that is for the Courts to decide. It is not the use of the words ‘Savin’ and ‘Ricoh’ on the website with which the Panel is concerned.  It is Respondent’s use of disputed domain names which clearly imply a close affiliation between the trademark holders and the holder of the domain name.

Nor can the disclaimer by Respondent in the website that he is not an authorized dealer of Complainants assist Respondent’s case.  The damage to Complainant’s marks lies in the existence of the disputed domain names which are capable of being accessed by persons wishing to make some enquiry concerning Complainants.  Such persons could easily access Respondent’s websites.  See Comcast Corp. v. Comcast Broadband LLP., FA 9976 (Nat. Arb. Forum October 29, 2001).  The State Bar of California decision, cited above, made the essential point, i.e. that merely placing language on the website to disclaim association with another entity does not solve the confusion caused by the domain name itself which will continue to attract web users.  This initial confusion is the basis for finding a violation of the Complainant’s rights. See Am. Online Inc v. Griffin, FA 102745 (Nat. Arb. Forum January 22, 2002).

Nor can the <savinsucks.com> decision assist Respondent.  In this case Respondent appeared to want to establish a website critical of Savin.  The Panel was unable to find bad faith.  In particular, it found no evidence that (a) the primary purpose of registration was to disrupt the business of the Complainant; (b) the Complainant and the Respondent were competitors; (c) the Respondent intended for commercial gain to attract internet users to the site which was inoperative.

It is this last finding that most strongly distinguishes the present case.  Respondent’s disputed domain names must attract internet users to the websites for commercial gain.

Reverse Domain Name Hijacking

Respondent’s claim of reverse domain-name hijacking was made without any evidence.  No authorities were cited in support of it.  The Panel finds that claim without foundation and dismisses it.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <savinusa.com> and <ricohamerica.com> domain names be TRANSFERRED from Respondent to the respective complainants.

Respondent’s claim of reverse domain name hijacking is dismissed.

Hon. Sir Ian Barker, QC Panelist
Dated:  August 25, 2004

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