Domain name – Domain name dispute resolution policy – Exclusivity in registration – Promotion of trademark established goodwill – Mobile office technology proposal - Bad faith use – Express written consent or implied permission necessary – Non-disclosure agreement – Pattern of conduct – Bad faith registration – Arbitrary term – Confusingly similar – Registered without permission for leverage purposes – Holding domain name hostage – More than mere registration is required.

Complainant was registrant of trademark, KINKO’S, and had registered other trademarks, KINKO’S YOUR BRANCH OFFICE and YOUR BRANCH OFFICE.  Complainant also owned the kinkos.com domain name.  Respondent registered the domain name kinkosoffice.com.  Complainant had exclusivity in registration since it had spent a lot of money in promoting its name and mark.  Complainant had established goodwill over time.

Held, Name Transferred to Complainant.

Complainant’s KINKO’S mark is an arbitrary term whose sole function is to identify Complainant as the source of its products and services.  The word “office” does not distinguish the mark.  Therefore, the domain name kinkosoffice.com is confusingly similar to the corresponding KINKO’S trademark and kinkos.com domain name. 

Respondent has no rights or legitimate interests in respect of the domain name.  The mere registration of a domain name does not establish legitimate rights in the domain name.  There is no evidence of any legitimate use or preparation for use of the disputed domain name by Respondent.  Rather it appeared that the domain name was registered for ultimate use of Complainant. 

Respondent registered the disputed domain name for resale purposes to Complainant, without  Complainant’s express or implied permission, as a form of leverage to extract a business deal from Complainant.  Such a business deal was not sought by Complainant and in fact, was in direct competition with Complainant’s existing products and/or services.  This is bad faith use and registration.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Panel Decision referred to
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Crary, Panelist: -

1. Preliminaries:

This is a domain name dispute pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (Policy) and Rules for Uniform Domain Name Dispute Resolution Policy (Rules).  James A. Crary was selected as the sole panelist.

2. The Parties:

Complainant is Kinko’s Inc.  Registrant/Respondent is eToll, Inc. f/k/a E Corp.

3.  The Domain Name(s) and Registrar(s):

The domain name at issue is kinkosoffice.com.  The domain name registrar is Network Solutions.  The date of the domain name registration is August 28, 1998.

4.  The Procedural History:

The administrative proceeding was commenced on April 20, 2000.  The response was due May 10, 2000.  However, the response was filed May 9, 2000.  Complainant requested the transfer of the domain name kinkosoffice.com to Complainant.  In contrast, Respondent requested the retention of the domain name kinkosoffice.com.

5. Factual Background:
a)  The Complaint:

Complainant has used its mark for approximately thirty years. KINKO’S became a registered mark with the U.S. Patent and Trademark Office December 27, 1994. The service mark is used in connection with Complainant’s business activities, which include rental of office machinery, photocopying, word processing, typing, compiling and preparing documents.  Complainant also owns the kinkos.com internet domain name. It has registered other trademarks including KINKO’S YOUR BRANCH OFFICE and YOUR BRANCH OFFICE.

Respondent registered the domain name kinkosoffice.com, which is nearly identical to Complainant’s federally registered marks.

Complainant has used its KINKO’S marks substantially and continuously since 1970 and has spent a significant amount of money, time and effort, both on and off the internet promoting its name and mark.  As a result, Complainant has acquired goodwill in its KINKO’S name.
Respondent registered the domain name kinkosoffice.com with Network Solutions on August 29, 1998.  The domain name is not active currently.

Complainant alleges that the administrative contact for Respondent approached a representative of Complainant and proposed a “mobile office concept” for use in connection with the kinkosoffice.com domain name.  Complainant maintains that a mobile office concept was already in use by Complainant.  Accordingly, Complainant was not interested in the proposal.

According to the complaint, Respondent proposed the mobile office concept to Complainant in an effort to make a business deal with Complainant wherein Complainant could use the disputed domain name upon payment by Complainant to Respondent for its services. Complainant was not interested in Respondent’s concept and informed Respondent of its trademark rights. Complainant requested that Respondent transfer the kinkosoffice.com domain name.  However, Respondent refused.

Complainant maintained that Respondent was not authorized to register the disputed domain name.  It maintained that Respondent was well aware of the famous KINKO’S brand name.  Notwithstanding that knowledge, Respondent attempted to capitalize on Complainant’s fame and wealth by taking something from Complainant, the kinkosoffice.com domain name, in an effort to offer it back to Complainant in exchange for a business deal.

Complainant maintained that Respondent’s conduct was in bad faith as it had intentionally registered an infringing domain name for the purpose of selling, renting or otherwise transferring the domain name to Complainant who is the owner of the KINKO’S marks for profit in excess of its registration costs.  Complainant sought transfer of the kinkosoffice.com domain name to it by Respondent.

b) The Response:

Respondent asserted that it was irrelevant that the kinkosoffice.com domain name was identical or confusingly similar to Complainant’s KINKO’S trademark. Respondent had not and would not make commercial use of the domain name without the express written consent of Complainant. 

It was denied that Respondent had no right or legitimate interest in the kinkosoffice.com domain name. The domain name was registered in connection with a mobile office technology proposal developed by Respondent for Complainant. Respondent was concerned that its mobile office technology could be utilized by Complainant without Respondent being properly compensated. Complainant had refused to sign a non-disclosure agreement concerning Respondent’s mobile office concept.

Respondent further maintained that Complainant’s Exhibits contained no evidence supporting that it was already utilizing its own mobile office concept. 

Respondent asserted that neither it nor any agent nor employee associated with Respondent attempted to benefit from the registration of Complainant’s “well known mark” by offering it back to Complainant.  Complainant had not supported this allegation with any proof.

Respondent denied registering the kinkosoffice.com domain name in bad faith.  Rather it was Complainant who acted in bad faith by attempting to utilize Respondent’s mobile office concept without adequately compensating Respondent.  Respondent also maintained that it had not registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.  Respondent further maintained that it had not engaged in a pattern of such conduct.

6.  Discussion and Findings:

According to Section 4(a) of the Policy, for Complainant to be entitled to cancellation or transfer of a domain name, Complainant must prove that the disputed domain name:

(1) 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.

Complainant’s KINKO’S mark is an arbitrary term. The principle function of this arbitrary term is to identify Complainant as the source of its products and services. The mark has substantial commercial value derived from this function. The principle value of the KINKO’S mark lies in its role as a product identifier, not as a vehicle for conveying public information.  Complainant also owns the marks, KINKO’S YOUR BRANCH OFFICE and YOUR BRANCH OFFICE. The word “office” did not distinguish the mark. Therefore, the kinkosoffice.com domain name was concluded to be confusingly similar to Complainant’s registered marks.
 
Respondent’s assertion that the confusing similarity between the disputed domain name and Complainant’s trademark is irrelevant is without merit.  Respondent registered the disputed domain name without permission as a form of leverage to extract a business deal, which was not sought by Complainant.  Respondent’s promise not to use the domain name is an empty promise when in fact, Respondent, in effect, holds the domain name hostage.

Accordingly, the Panelist concluded that Complainant proved the first element required, showing abusive domain name registration. 

Respondent does not dispute Complainant’s ownership of its trademarks.  According to Respondent’s Exhibit 1, the kinkosoffice.com domain name was registered in connection with a business proposal that Respondent had developed and had presented to Complainant.  Neither Complainant nor Respondent offered any particulars concerning the nature of their respective mobile office concepts.

There was no evidence in the record, which would indicate that Respondent had any right or legitimate interest in respect to the kinkosoffice.com domain name other that it has registered the domain name. If mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of Paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a complaint of abusive registration. Construing the policy so as to avoid an illogical result, the Panelist concludes that mere registration of the domain name does not establish rights or legitimate interests in the disputed domain name.

There is no evidence of any legitimate use or preparation for use of the disputed domain name by Respondent.  Rather it appeared that the domain name was registered for the ultimate use of Complainant. Therefore, Complainant established the second element necessary to prevail on its claim of abusive domain name registration. 

Paragraph 4(b)(i) of the Policy sets forth circumstances “in particular but without limitation,” which if found by the Panelist shall be evidence of registration and use of a domain name in bad faith.  The circumstances included those indicating that “the Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of a trademark or service mark…for valuable consideration in excess of documented out-of-pocket cost directly related to the domain name.” 

Respondent registered the domain name in connection with a business proposal it made to Complainant. The registration was performed without permission, either expressed or implied, from Complainant. When Complainant declined the business proposal and asserted its trademark rights, Respondent refused to transfer the domain name since it feared Complainant was attempting to utilize Respondent’s mobile office technology without compensation to Respondent.  It was concluded that the conduct of Respondent fell within Paragraph 4(b)(i) of the Policy.  It was therefore concluded that Respondent registered and used the kinkosoffice.com domain name in bad faith, the final element necessary for Complainant to prove in order to be entitled to the transfer of the disputed domain name.

7. Decision and Order:

It was concluded by the Panelist that the domain name registered by Respondent is confusingly similar to the trademark and service marks in which Complainant has rights and in which Respondent has no rights or legitimate interests and that Respondent’s domain name has been registered and is being used in bad faith.  Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist orders that the kinkosoffice.com domain name be transferred to Complainant.

Dated:  May 27, 2000.