Fibrocap, Inc. v. Vanseo International, Ltd.
[Indexed as: Fibrocap v. Vanseo International]
[Indexed as: SPACEKAP.COM]
eResolution
Administrative Panel Decision
Case No. AF-0184
Commenced: 30 April 2000
Judgment: 8 June 2000
Presiding Panelist: Kevin C. Trock
Domain name - Domain name dispute resolution policy - Canadian trademark
- Continuous use - Identical - Confusingly similar - Bad faith registration
- Bad faith use - Legitimate interest - Spacekap - No Authorization - Former
salesman - Similar Product.
Complainant was registrant of Canadian trademark spacecap and had
been continuously using the mark in Canada and the United States in connection
with its products. Complainant also holds Canadian and United States patents
for these products. Respondent registered the domain name, spacekap.com.
Held, Name Transferred to Complainant
Complainant has the Canadian trademark registration for the mark
SPACEKAP, which is identical to the domain name SPACEKAP.COM (except for
the .COM locator), registered by Respondent. This is sufficient evidence
to show that Respondent's domain name is confusingly similar to Complainant's
trademark.
Respondent has no rights or legitimate interest in the domain name.
Because Respondent did not file a response to the complaint, the panel
has only the complaint by which to address this contention and there is
no evidence on record that suggests that Respondent has rights or legitimate
interest in the domain name.
Respondent is using the domain name in bad faith by disrupting competitor's
business. Respondent was salesman for Complainant's exclusive distributor
in British Columbia, Canada, and as such sold the SPACEKAP product. Therefore,
Respondent knew or should have known that the term SPACEKAP was a trademark
belonging to Complainant, and that using the domain name SPACEKAP.COM would
disrupt business of Complainant. Additionally, Respondent was informed
on May 4, 1999 that he was using the mark without authorization, but refused
to comply with the demand that he stop using the mark immediately.
Respondent is also using the domain name in bad faith by using Complainant's
trademark to intentionally attract Internet users for commercial gain.
Respondent advertises his product, which is the same type of product as
Complainant's, on his web site with a domain name that is identical or
confusingly similar to Complainant's trademark. Internet users searching
for Complainant's products by typing in as the URL the name of the trademark
with the .com extension would be directed to Respondent's web site believing
that they had found Complainant's web site.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Trock, Panelist: -
ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Complainant:
FIBROCAP, INC.
Respondent:
VANSEO INTERNATIONAL, LTD.
Case Number:
AF-0184
Contested Domain Name:
spacekap.com
Panel Member:
Kevin C. Trock, Esq.
1. Parties and Contested Domain Name
The complainant is Fibrocap Inc. of Quebec, Canada. The respondent is
Vanseo International Ltd. Of British Columbia, Canada.
The domain name at issue is: spacekap.com
2. Procedural History
A complaint was submitted electronically through eResolution's website
on April 14, 2000. The hardcopy of the complaint was received by eResolution
on April 19, 2000. Payment of fees was received on April 21, 2000.
The eResolution clerk:
(1) confirmed the identity of the registrar for the contested domain
name;
(2) verified the registrar's Whois database and confirmed all the required
contact information for respondent;
(3) verified if the contested domain name resolved to an active web
page;
(4) verified if the complaint was administratively compliant.
The inquiry led the clerk of eResolution to the following conclusions:
the registrar is Network Solutions Inc., the Whois database contains all
the required contact information but the billing contact, the contested
domain name resolves to an inactive web page and the complaint is administratively
compliant.
An email was sent to the registrar by eResolution clerk's office to
confirm the name of the billing contact and to obtain a copy of the registration
agreement on April 28, 2000. The requested information was received by
eResolution on May 31, 2000.
The clerk then sent a copy of the complaint form and the required cover
sheet in accordance with paragraph 2 (a) of the ICANN Rules for Uniform
Domain Name Dispute Resolution Policy.
The clerk fulfilled all its responsibilities under paragraph 2 (a) in
connection with forwarding the complaint to the respondent on April 30,
2000. That date is the commencement date of this administrative proceeding.
On April 30, 2000, the clerk's office notified the complainant, the
respondent, the concerned registrar, and ICANN of the date of commencement
of the administrative proceeding.
On May 23, 2000, the respondent failed to respond to the complaint by
any means of accepted communication (electronic format, facsimile or courier).
On May 24, 2000, the clerk's office notified the parties of the respondent's
failure to submit his response by any means of accepted communication and
proceeded to appoint the panel.
On May 24, 2000, the clerk's office contacted Mr. Kevin Trock and requested
that he act as panelist in this case.
On May 25, 2000, Mr. Kevin Trock accepted to act as panelist in this
case and filed the necessary declaration of independence and impartiality.
On May 31, 2000, the parties were notified that Mr. Kevin Trock had
been appointed and that a decision was to be, save exceptional circumstances,
handed down on June 13, 2000.
3. Factual Background
In the absence of any response by the respondent and in the absence
of exceptional circumstances, the Panel shall decide the dispute based
on the complaint. (ICANN rule, para. 5 (e)). Accordingly, the Panel accepts
as true the statements set forth as factual information in the complaint
as no response or other documents refuting these factual statements were
submitted by the respondent.
The complainant is a manufacturer of fiberglass pick-up truck boxes,
for which the complainant holds U.S. and Canadian product patents. The
complainant uses the trademark SPACECAP in connection with these products.
The complainant is the owner of Canadian Trademark Registration No.
TM 476691 dated May 23, 1997, for the mark SPACEKAP for use with truck
caps made of reinforced fiberglass. The complainant has been continuously
employing said trademark in Canada with these products since at least July
1, 1992. The complainant has also been continuously using the SPACEKAP
trademark in Washington, D.C. of the United States, where it has been distributing
its products since 1993.
4. Parties' Contentions
Complainant contends that it owns in the trademark SPACECAP for use
with fiberglass pick-up truck boxes; that the domain name at issue is identical
to this trademark, that the respondent has no rights or legitimate interest
in respect to the domain name at issue, and that the respondent registered
the domain name in bad faith. Respondent did not file a response to the
complaint.
5. Discussion and Findings
In order to prevail, the complainant must prove the following three
elements: (i) respondent's domain name is identical or confusingly similar
to a trademark or service mark in which the complainant has rights; (ii)
respondent has no rights or legitimate interests in the domain name; and
(iii) respondent has registered the domain name and is using it in bad
faith. (ICANN policy, para. 4 (a)).
The respondent's domain name is identical to the trademark in which
the complainant has rights. Complainant has a Canadian registration for
the mark SPACEKAP, which is identical to the domain name spacekap.com but
for the .com top-level domain (TLD) locator. Hence, this is sufficient
evidence to show that respondent's domain name is confusingly similar to
complainant's trademark.
Respondent has no rights or legitimate interests in the domain name.
Because respondent has not filed a response to the complaint, the panel
only has the complaint by which to address this contention and there is
no evidence on the record that suggests that the respondent has a right
or legitimate interest in the domain name spacekap.com.
Respondent has registered the domain name spacekap.com and is using
it in bad faith. Evidence of bad faith includes registering the domain
name primarily for the purpose of disrupting the business of a competitor
(ICANN policy, para. 4 (b)(iii)) or using a domain name to intentionally
attract, for commercial gain, Internet users to the respondent's web site
(ICANN Policy, para. 4(b)(iv).
Respondent was a salesman for the exclusive distributor of the complainant's
in British Columbia, Canada and, as such, was in charge of selling SPACEKAP
pick-up truck boxes; therefore, Respondent knew, or should have known,
that the term SPACEKAP was a valid trademark belonging to the complainant.
Respondent also knew or should have known that using the domain name spacekap.com
would disrupt the business of the complainant who was already using the
mark in the same competitive market. Additionally, respondent was informed
on May 4, 1999, that he was using the complainant's trademark SPACEKAP
on his web site without authorization and he should cease immediately.
Respondent refused to comply with the May 4, 1999, demand letter.
Additional evidence of bad faith includes using the domain name to intentionally
attempt to attract, for commercial gain, Internet users to a web site or
other on-line location, by creating a likelihood of confusion with the
complainant's mark as to the source of sponsorship, affiliation, or endorsement
of a web site or location or of a product or service on a web site or location.
(ICANN policy, para. 4 (b)(iv)). On September 11, 1998, respondent registered
the domain name spacekap.com and advertised SPACEKAP pick-up truck boxes
on his web site to intentionally attempt to attract Internet users to his
web site for commercial gain. Typically, when Internet users wish to
find the web site of a company or a particular brand when they do not know
the URL, they will type in the name of the company or the brand with the
extension ".com." An Internet user searching for complainant's web site
would believe that spacekap.com would be the correct URL to find information
about the complainant or its brand. Respondent advertises his product,
which is the same type of product as complainant's, namely pick-up truck
boxes, on his web site with a domain name that is identical or confusingly
similar to complainant's
trademark and brand name. Thus, Internet users searching for complainant's
products would be directed to respondent's web site believing that they
had found complainant's web site. Clearly, respondent was disrupting complainant's
business and intentionally attempting to attract Internet users to his
web site by using complainant's trademark for commercial gain.
6. Conclusions
For all the foregoing reasons, the Panel concludes that the domain name
registered by the respondent is identical or confusingly similar to the
trademark in which the complainant has rights, and that the respondent
has no rights or legitimate interests in respect of the domain name, and
that the respondent's domain name has been registered and is being used
in bad faith to disrupt the business of the complainant and to attempt
to attract Internet users to respondent's web site for commercial gain.
Accordingly, pursuant to ICANN policy, paragraph 4 (i), the Panel directs
that the registration of the domain name be transferred to the complainant.
This decision of the Administrative Panel in Case No. AF-0184 was rendered
on the 8th day of June, 2000 at Chicago, IL.
Signed
(s) (s) Kevin Trock, Esq.
Presiding Panelist
Domain
Name Transferred
