Multiscancorp.com

The timeline behind multiscancorp.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Compudata S.A. Corporation v. Gilbert Melgar Claim Number: FA0806001211478 PARTIES Complainant is Compudata S.A. Corporation (“Complainant”), represented by Robert C. Kain, Jr., Florida, USA. Respondent is Gilbert Melgar (“Respondent”), Philippines. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <multiscancorp.com>, registered with Godaddy.com, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Jonas Gulliksson as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on June 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 23, 2008. On June 24, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <multiscancorp.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 30, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 21, 2008 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@multiscancorp.com by e-mail. A timely Response was received in electronic format only, but not in hard copy on July 21, 2008. The Response is therefore incomplete under ICANN Rule 5. An Additional Submission was submitted by Complainant on July 29, 2008 and was determined to be deficient. On July 29, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant, Compudata, is a Argentinean based company with an exclusive U.S. distributor, Multiscan Corporation, operating in Miami, Florida. Compudata has been developing machines for the data collection industry since 1987. Complainant Compudata is the owner of Reg. No. 1,996,349 for the trademark MULTISCAN. MULTISCAN readers are being used by Disneyland for entrance tickets, by a wide range of companies for gift certificates, book returns, and even payroll. MULTISCAN readers also are used for bar-coded currency in Lebanon, lottery tickets in Sweden, Spain, Panama, Colombia, Venezuela, Romania, etc, gasoline checks in Russia, Kanbans in Malaysia, Canada and the U.S.A., electrical utility bills, telephone bills, water bills in Poland, Colombia, Costa Rica, Nicaragua, El Salvador, Tunis, Brazil, Chile, Argentina and the U.S., restaurant tickets in India, Turkey, Lebanon, Austria, Switzerland. Hungary, Mexico, etc, entrance tickets to amusement parks and tickets in the U.S., France, Germany and Canada, plastic telephone cards in the U.S. and Argentina and many other places with different applications. Complainant Compudata has a related company in the United States, Multiscan Corp., which exclusively distributes MULTISCAN bar code readers and currency counters and mail handling machines. Multiscan Corp. is the exclusive distributor of MULTISCAN goods in the U.S. Multiscan Corp. is a Florida corporation, having an address at Suite 502, 1110 Brickell Avenue, Miami, FL 33131. Multiscan Corp., as an exclusive distributor of MULTISCAN goods, is a related company of Compudata under the Lanham Act, 15 U.S.C. sec. 1127 since Compudata controls the nature and quality of the MULTISCAN goods sold by Multiscan Corp. Also under the Lanham Act, 15 U.S.C. 1055, use of the trade name Multiscan Corp. and all trademark use of MULTISCAN by Multiscan Corp. inures to the benefit of Complainant, Compudata. Complainant Compudata owns a U.S. trademark registration for the mark "MULTISCAN" for bar code scanners. (Reg. No. 1,996,349). The first use of the mark dates back to 1989 in the United States. Complainant, through its U.S. subsidiary, operates its business in the U.S. and also offers its goods and services through its website www.multiscan-corp.com. Identical or confusingly similar Complainant's trade name is Multiscan Corp. and Complainant Compudata owns a trademark for "MULTISCAN" and has trademark rights to the mark MULTISCAN based upon its sales of MULTISCAN machines throughout the world. Respondent's domain <multiscancorp.com> is identical or confusingly similar to Complainant's trade name and encompasses all of Complainant's trademark. The mere addition of "corp" to the domain is not sufficient to distinguish them. Additionally, Complainant currently uses "multiscan-corp.com" as its website address. Therefore, mere deletion of the "- " from Complainant's domain makes Respondent's domain identical or confusingly similar. Rights or legitimate interests Upon information and belief, before any notice to Respondent of the dispute, Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is not in connection with a bona fide offering of goods or services. Upon information and belief, Respondent has not been commonly known by the domain name. Upon information and belief, Respondent is not making a legitimate noncommercial or fair use of the domain name, and has an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Respondent’s current website does not offer any goods or services. None of the links on the homepage are active. When a user clicks on a link for another page, it merely resolves to the same home page with identical data and text. The text on the accused website is complete jibberish. The first words in the main body text read "Lorem ipsum dolor...." The "lorem ipsum dolor" text on the website is often used as place holder text to demonstrate a font or merely to give the appearance of legitimate text. The words are nonsensical and have no meaning. Therefore, Respondent has no legitimate interests with respect to the domain. The images contained on the website are stock photos, again to merely give the appearance of legitimate use. Additionally, a review of Respondent's WHOIS information may provide relevant information regarding a common name of the Registrant. The WHOIS information has no relation to "multiscancorp.” Therefore, Registrant-Respondent cannot find shelter in the provisions of Policy ¶ 4(c)(ii) by reason of its common name. See, for example, Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that "nothing in Respondent's WHOIS information implies that Respondent is 'commonly known by' the disputed domain name" is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a disputed domain name under Policy ¶ 4(c)(ii) where that respondent is not known by the competing mark). Bad faith The fact that the domain name includes the entire MULTISCAN mark supports a finding of bad faith. See Wal-Mart Stores, Inc. v. Milchen, D2005-0130 (WIPO April 10, 2005); Cellular One Group v. Brien, D2000-0028 (WIPO March 10, 2000); Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Additionally, the disputed domain name is identical to Complainant Compudata's trade name, with the addition of the generic top-level domain ".com." It is well settled that addition of a generic top-level domain does not remove the confusing similarity of a domain name. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000). Further, the accused domain was registered on February 26, 2008. Complainant's rights to the mark MULTISCAN predate this registration by nearly 20 years. Respondent's registration and use of the domain as a place holding page is bad faith. B. Respondent A timely Response was received in electronic format only, but not in hard copy, on July 21, 2008. The Response is therefore incomplete under ICANN Rule 5 and will not be considered by the Panel. C. Additional Submissions An Additional Submission was submitted by Complainant on July 29, 2008 and was determined to be deficient. The Panel will not consider this Additional Submission in its Decision. DISCUSSION FINDINGS 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; (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 has stated that the <multiscancorp.com> domain name is confusingly similar to Complainant’s MULTISCAN mark. The Panel makes the following observations. The disputed domain name incorporates Complainant’s trademark MULTISCAN in its entirety. Because “multiscan” is the distinctive part of the disputed domain name, it is confusingly similar to Complainant’s trademark MULTISCAN. In addition to the trademark MULTISCAN the disputed domain name also includes the word “corp,” which is the common abbreviation for “corporation,” and the generic top-level domain (“gTLD”) “.com.” The addition of the common, descriptive or generic term ‘corp’ does not change the fact that the disputed domain name is confusingly similar to Complainant’s trademark. Moreover, the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. In light of the above the Panel finds that the domain name <multiscancorp.com> is confusingly similar to Complainant’s trademark MULTISCAN. Rights or Legitimate Interests The complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Complainant has stated the following. - Respondent has not made use of, or made demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services. - Respondent is not commonly known by the domain name. - Respondent is not making a legitimate noncommercial or fair use of the domain name. - Respondent has an intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. - Respondent's current website does not offer any goods or services. None of the links on the homepage are active. When a user clicks on a link for another page, it merely resolves to the same home page with identical data and text. The text on the accused website is complete jibberish. Therefore, Registrant has no legitimate interest with respect to the domain. The images contained on the website are stock photos, again to merely give the appearance of legitimate use. - Respondent's WHOIS information has no relation to "multiscancorp.” The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, thus shifting the burden of proof to Respondent to show that is does have rights or legitimate interests in a domain name. A timely Response from Respondent was received in electronic format only, but not in hard copy, on July 21, 2008. The Response was thereby incomplete under ICANN Rule 5 and was not considered by the Panel. Therefore, the Panel finds that Complainant has shown that the Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii). Registration and Use in Bad Faith Complainant has alleged the following regarding Respondent’s bad faith: - The fact that the domain name includes the entire MULTISCAN mark supports a finding of bad faith, - The accused domain was registered on February 26, 2008. Complainant's rights to the mark MULTISCAN predate this registration by nearly 20 years and Respondent's registration and use of the domain as a place holding page is bad faith. The Panel notes that lack of bona fide use, on its own, is insufficient to establish bad faith where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain (see Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001). Complainant has neither alleged nor shown any other circumstances or facts in support of its assertion of bad faith on the part of Respondent. Thereby Complainant has not met the burden of proof incumbent on him. In light of the above it is the Panel’s finding that Complainant has not shown that Respondent has registered and used the <multiscancorp.com> domain name in bad faith. DECISION Complainant having failed to prove Respondent’s registration and use in bad faith and thereby not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Jonas Gulliksson, Panelist Dated: August 12, 2008 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.