WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Paradox Security Systems Ltd. v. SECPRAL COM SRL
Case No. DRO2002-0005
1. The Parties
The Complainant is Paradox Security Systems Ltd., 780,
Industrial Boul., Saint-Eustache, Quebec, Canada J7R 5V3,
represented by Mr. Stephen D. Hart, Montrťal, Quebec, Canada
The Respondent is SECPRAL COM SRL, Actorului 9, 3400 Cluj
Napoca, Romania, represented by Mr. Zsolt Karpat, Cluj, Romania
2. The Domain Name and Registrar
The dispute concerns the domain name <paradox.ro>
("the Domain Name").
The Registrar is Romanian National R&D Computer Network
("RNC .ro"), Bucharest, Romania.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center")
received the Complainantís Complaint in electronic form on
September 10, 2002, and in hard copy on September 12, 2002.
The Center verified that the Complaint was filed in
accordance with the requirements of the ICANN 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").
Complainant made the required payment to the Center.
On September 13, 2002, the Center transmitted via e-mail to
the Registrar a request for registrar verification in connection
with this case. The Registrar confirmed, by e-mail, to the
Center that (1) RNC .ro is the Registrar of the Domain Name, (2)
the Registrant is SECPRAL COM SRL, (3) Mr. Karpat Zsolt and Mr.
Mihai Lelcean are the Administrative, Billing and Technical
Contacts, (4) the Policy applies to the Domain Name, and (5) the
language of the Service Agreement is Romanian and English.
On September 20, 2002, the Center transmitted the
Notification of Complaint and Commencement of Administrative
Proceeding, together with a copy of the Complaint, to the
Respondent via e-mail, facsimile and via post/courier to the
address identified in the Registrar verification response. The
Center advised that (1) the Respondentís Response was due by
October 10, 2002, (2) in the event of default the
Center would still appoint a Panel to review the facts of the
dispute and to decide the case, (3) the Panel may draw such
inferences from the Respondentís default as it considers
appropriate, and (4) the Complainant had elected for the matter
to be decided by a single panelist.
The Respondent filed the Response via e-mail on October 3, 2002.
A hardcopy of the Response was received by the Center on October 8, 2002.
On October 9, 2002, in view of the Complainantís
designation of a single panelist the Center invited Mr. P-E H
Petter Rindforth to serve as a panelist.
Having received Mr. Rindforthís Statement of Acceptance and
Declaration of Impartiality and Independence, the Center, on
October 14, 2002, transmitted to the parties a
Notification of Appointment of Administrative Panel and
Projected Decision Date, in which Mr. Rindforth was formally
appointed as the sole Panelist. The Projected Decision Date was
October 28, 2002. The Sole Panelist finds that the
Administrative Panel was properly constituted and appointed in
accordance with the Rules and Supplemental Rules.
The Administrative Panel shall issue its Decision based on
the Complaint, the Response, the Policy, the Rules and the
Supplemental Rules. The case before the Panel was conducted in
the English language.
4. Factual Background
The Complainant is a company incorporated in Canada since
1989, and in the business of selling security system equipment
and accessories for a wide range of markets in over 45 countries
around the world, including Romania.
The Complainant has filed a trademark application for PARADOX
in Romania on March 14, 2002, for security systems and
access controls, namely, detectors, control panel, keypads,
sensors, access and security management software in
international class 9 (a copy of the application, not translated
into English, has been provided as Annex 4 of the Complaint).
Complainant has also filed a Community Trademark application for
PARADOX on January 30, 2002, (Annex 5), and has
trademark registrations for PARADOX in Canada since March 15, 1996,
and in the USA since May 7, 1996, (Annex 6).
The Complainant is also the owner of trademark registrations
for PARADOX PRO in Canada and the USA, as well as for PARADOX
DIGITAL DETECTION in the USA (Annex 7-8).
The Respondent applied for the Domain Name on October 26, 2001,
and it was registered on October 28, 2001.
Respondentís company was founded in 1994 and is in the
business of selling/reselling security products from different
5. Partiesí Contentions
The Complainant asserts that the company is very well known
and is one of the top ten manufacturers of security systems in
the world. Complainant has invested substantial sums of money in
developing and marketing its products and trademarks all over
The Domain Name is confusingly similar to the Complainantís
trademarks PARADOX, PARADOX PRO, PARADOX PRO & Design and
PARADOX DIGITAL PROTECTION & Design. The ".ro"
part of the Domain Name increases the degree of similarity, as
it leads to believe that the Complainant is doing business in
Romania using the disputed Domain Name.
The Respondent cannot demonstrate that it has rights or
legitimate interests in the Domain Name, and the Complainant has
not granted the Respondent any rights to register a domain name
comprising the PARADOX trademark.
Furthermore, the Respondent is not commonly known by the
Domain Name, nor has he made any legitimate non-commercial or
fair use of the same.
The Complainant states that the Respondent has registered and
used the Domain Name in bad faith for the purposes of misleading
the consumer and capitalizing on the well-known PARADOX
trademarks and profiting from the international and domestic
goodwill that the Complainant has built up over the years.
At the time the Respondent registered the Domain Name, it was
fully aware of the existence of Complainantís trademark rights.
The Respondent has been conducting business in Romania since
around 1994 and is a direct competitor of the Complainant and
its distributors in Romania. The website "www.secpral.ro"
of Respondent (Annex 9) shows clearly that Respondent is a
distributor of the Complainantís direct competitor, Digital
Security Controls, Ltd. ("DSC") and they sell DSC's
products in Romania. Thus, many websites identify the
complainant and DSC as competitors in Romania and in other
countries (Annex 10). The Complainant concludes that Respondent
registered the Domain Name primarily for the purpose of
disrupting Complainantís business.
The Complainant further states that the Domain Name was
registered intentionally for the main purpose to discredit the
Complainant and trying to divert Complainantís customers and
other potential customers to Respondentís websites.
The Complainant requests, in accordance with Paragraph 4(i)
of the Policy, that the Administrative Panel issue a decision
that the Domain Name be transferred to the Complainant.
The Respondent does not contest that the Complainant
presently has trademark rights in Canada, USA, Romania and some
other countries, but points out the fact that at the time of
Respondentís registration of the Domain Name the Complainant
had no trademark registration in Romania.
According to the Respondent, the Complainant started
exporting products to Romania in 1993, and the fact that
Complainant has not, during these years, registered the Domain
Name itself in Romania shows a lack of interest in the same.
Respondent also refers to a search (Annex 1 of the Response),
indicating that "in most European countries" the
domain <paradox.ccTLD> is free and not registered, which
demonstrates the Complainants lack of interest.
SC Secpral Com SRL Romania was founded in 1994 and has since
then been in the business of selling and reselling security
products from different producers, either as a distributor or as
a reseller from other Romanian companies, including products
from the Complainant.
The Domain Name was registered for the purpose of customer
support and information on security products. The Respondent
therefore claims to have a legitimate interest in the Domain
The Respondent states that the translation of the web page,
provided as Annex 11 of the complaint, is not accurate. The
correct translation, according to the Respondent, is:
"Secpral Com Romania / Complete security systems, access
control, fire systems, car alarms, automatics, radio devices,
closed caption television and everything about security you can
find to us. We are distributor of Canadian group / DSC / number
1 in world in that domain / On the second place seems to be /
PARADOX / For more information visit our web pages /
www.secpral.ro / www.dsc.ro / Any comments, suggestion or
observation is welcome and you can send it at email@example.com
The Respondent points out that they have placed the
Complainant "on the second place", whereas the
Complainant claims to be "one of the top ten". The
Respondent therefore argues that the content of the said web
page is not detrimental to the Complainant.
The Respondent admits that they are a distributor of one of
the competitorís of the Complainant, but also for many other
manufacturers of security systems. Further, the Respondent
argues that the Domain Name (and other domain names in the name
of the Respondent) is mainly for the purpose of information and
technical support for all products that the Respondent sells,
not only for the DSC products. The Domain Name is used in good
faith, "offering information and technical support about
security products, including complainant products".
Finally, Respondent states that they do not sale or rent
their domain names to anyone, as the Respondent has registered
them for the only purpose of offering Romanian Internet users
information and technical support.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, the Complainant
must prove each of the following:
(i) that the Respondentís Domain Name is identical or
confusingly similar to a trademark or service mark in which the
Complainant has rights; and
(ii) that the Respondent has no rights or legitimate
interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being
used in bad faith.
1) Identical or Confusing Similarity
The pending trademark applications for PARADOX in Romania and
the European Union (Community Trademark) can not be considered
in this dispute, as they were filed after the registration of
the Domain Name.
However, it is an undisputed fact that the Complainant has
used the said trademark in Romania since 1993/1994, and that
Complainant is the owner of the registered trademark PARADOX in
Canada and in the USA. The relevant part "paradox" of
the Respondentís Domain Name <paradox.ro> is identical
The Complainant is also the owner of trademark registrations
for PARADOX PRO in Canada and the USA, as well as for PARADOX
DIGITAL DETECTION in the USA. The Panel concludes that the
Domain Name is confusingly similar to these trademarks.
2) No Rights or Legitimate Interests
The Respondent states that the Domain Name was registered for
the purpose of customer support and information on security
products, thereby claiming to have a legitimate interest in the
The Respondent is not an authorized agent or licensee of the
Complainantís products or services and has no other permission
to apply for any domain name incorporating the trademark
PARADOX. As established in a number of prior cases (such as:
The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co.,
Case No. D2000-0113 (April 13, 2000); R.T. Quaife
Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a
Quaife America v. Bill Luton, WIPO
Case No. D2000-1201 (November 14, 2000) and
Nokia Corporation v. Nick Holmes t/a EType Media, WIPO
Case No. D2002-0001 (March 6, 2002)), the
collateral trademark use necessary to allow resell of and/or
customer support in connection with the Complainantís security
products does not confer the right to use the trademark as a
Such use and registration, without the permission of the
trademark owner, does not create a legitimate interest in the
The Panel therefore concludes that the Respondent has no
legitimate interests in the Domain Name.
3) Registered and Used in Bad Faith
The Respondent does not contest the allegation that he, by
the time of the registration of the Domain Name, was aware of
the existence of the Complainantís trademark PARADOX. On the
contrary, Respondent admits that the registration was done with
the PARADOX trademark in mind and for the purpose of associating
the Domain Name with the PARADOX products.
The Respondent is a distributor of a competitor to the
Complainant, and has used the Domain Name in connection with a
website pointing out the said competitor ("DSC") as
the "number 1 provider in security field in the world".
The Complainant is referred to as "on the second place,
seems to be Paradox". The content of the said website
includes a recommendation to send comments to "firstname.lastname@example.org".
It is the opinion of the Panel that the use of the Domain Name
suggests that there exists an affiliation or endorsement with/from
On the other hand, the registration and use of the Domain
Name by a distributor of products from a competitor of the
Complainant, together with the fact that the website connected
therewith advertises the said competitor as "number 1"
may also indicate that the Respondent registered the Domain Name
for the purpose of disrupting the business of the Complainant.
In any case, the Panel concludes that the Respondent
registered and used the Domain Name in bad faith.
Accordingly, the Panel concludes that the Complainant has
succeeded in proving the three elements within paragraph 4(a) of
The Panel concludes (a) that the Domain Name <paradox.ro>
is identical to the Complainantís trademark PARADOX and
confusingly similar to the Complainantís trademarks PARADOX
PRO and PARADOX DIGITAL DETECTION, (b) that the Respondent has
no rights or legitimate interest in the Domain Name, and (c)
that the Respondent has registered and used the Domain Name in
Therefore, pursuant to paragraphs 4(i) of the Policy and
paragraph 15 of the Rules, the Panel orders that the Domain Name
<paradox.ro> be transferred to the Complainant Paradox
Security Systems Ltd.
P-E H Petter Rindforth
Dated: October 23, 2002