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, Montréal, Quebec, Canada ("Complainant").
The Respondent is SECPRAL COM SRL, Actorului 9, 3400 Cluj Napoca, Romania, represented by Mr. Zsolt Karpat, Cluj, Romania ("Respondent").
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 Complainant’s 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 Respondent’s 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 Respondent’s 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 Complainant’s designation of a single panelist the Center invited Mr. P-E H Petter Rindforth to serve as a panelist.
Having received Mr. Rindforth’s 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. Respondent’s company was founded in 1994 and is in the business of selling/reselling security products from different producers.
5. Parties’ 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 world.
The Domain Name is confusingly similar to the Complainant’s 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 Complainant’s 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 Complainant’s 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 Complainant’s business.
The Complainant further states that the Domain Name was registered intentionally for the main purpose to discredit the Complainant and trying to divert Complainant’s customers and other potential customers to Respondent’s 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 Respondent’s 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 Name.
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 firstname.lastname@example.org ".
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 competitor’s 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 Respondent’s 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 Respondent’s Domain Name <paradox.ro> is identical to PARADOX.
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 Domain Name.
The Respondent is not an authorized agent or licensee of the Complainant’s 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., Inc., WIPO 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 Complainant’s security products does not confer the right to use the trademark as a domain name.
Such use and registration, without the permission of the trademark owner, does not create a legitimate interest in the Domain Name.
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 Complainant’s 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 "email@example.com". It is the opinion of the Panel that the use of the Domain Name suggests that there exists an affiliation or endorsement with/from the Complainant.
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 Policy.
The Panel concludes (a) that the Domain Name <paradox.ro> is identical to the Complainant’s trademark PARADOX and confusingly similar to the Complainant’s 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 bad faith.
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