toytronix.com

Rom Caroselli v. ToyTronix Corporation and John Clark

Case No. D2004-0173

1. The Parties

The Complainant is Rom Caroselli, Scottsdale, Arizona, of United States of America.

The Respondents are ToyTronix Corporation and John Clark, Indianapolis, Indiana, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <toytronix.com> is registered with TierraNet d/b/a DomainDiscover.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2004. On March 8, 2004, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the domain name at issue. On March 12, 2004, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 10, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the 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").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2004. The Response was filed with the Center on March 26, 2004.

The Center appointed Nels T. Lippert as the sole panelist in this matter on April 6, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On March 27, 2004, the Center received a supplemental filing from the Complainant to which a supplemental filing from Respondent was received on April 2, 2004. As there were no exceptional circumstances asserted for consideration of the supplemental filings, the Panel declines to admit or consider the same.

4. Factual Background

The Complainant in this administrative proceeding is Rom Caroselli an individual residing in Scottsdale, Arizona. On November 25, 1996, the Complainant registered the trade name TOYTRONIX with the State of Arizona. TOYTRONIX, LLC is a limited liability company organized under the laws of the State of Arizona on December 30, 1998. TOYTRONIX LLC is the registered owner of two United States Trademark Registrations, TOYTRONIX No.2,450,637 issued May 15, 2001, for remote controlled toy vehicles claiming first use of May 13, 2000; and TOYTRONIX (Stylized) Registration No. 2,582,531 issued June 18, 2002, for remote controlled toy vehicles claiming first use of May 13, 2000.

The Respondents are ToyTronix Corporation of Indianapolis, Indiana and John Clark, an individual who is listed as the contact for ToyTronix Corporation in connection with registration of the domain name <toytronix.com>. The disputed domain name was registered by ToyTronix Corporation on or about February 7, 1999.

5. Parties' Contentions

A. Complainant

Complainant contends:

· That he is the owner or has rights in the trademark TOYTRONIX which has been registered in the United States Patent and Trademark Office under No. 2,582,531 and 2,450,637. Furthermore, Complainant contends that he has registered the trade name TOYTRONIX on November 25, 1996, and that the company name TOYTRONIX LLC was organized and registered with the State of Arizona as of December 30, 1998.

· The disputed domain name is identical to Complainant's registered trademark. That the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, has never been known by the disputed domain name nor has a made legitimate non-commercial or fair use of the disputed domain name.

· The disputed domain name was registered by Respondent after Complainant's pending trademark applications were published for opposition merely for the purpose of selling, renting or otherwise transferring the domain name to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs.

B. Respondent

Respondent contends:

· He has a legitimate interest in the name ToyTronix. The disputed domain name was registered by ToyTronix Corporation on February 8, 1999, over five years ago, in good faith and without knowledge of Complainant's trademarks.

· The disputed domain name was registered to allow the Respondent to conduct legal business in the field of educational toys for children and the disputed domain name was derived from Respondent's admiration of electronic test equipment manufactured by Tecktronix.

· After several years of research and development, ToyTronix Corporation failed after it was unable to obtain capital funding.

· After the business failure, the disputed domain name along with the domain name <toytronics.com> were offered for sale by Respondent to the public at documented out-of-pocket expenses.

· The disputed domain name has been offered to Complainant for documented out-of-pocket costs.

· Complainant has acted in bad faith which constitutes domain name hijacking.

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name <toytronix.com>transferred to itself, Complainant must prove the following:

(Policy paragraph 4(a)(i-iii)):

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant asserts that it is the owner of two federally registered trademarks for TOYTRONIX, Nos. 2,450,637 and 2,582,531. The Panel notes, however, that these federal registrations are issued to TOYTRONIX LLC and not the Complainant. Nevertheless, Complainant has shown that he is the registrant of the trade name, TOYTRONIX, with the State of Arizona. Complainant has also submitted a copy of certification that TOYTRONIX, LLC is a limited liability company organized under the laws of the State of Arizona as of the December 30, 1998. Although Complainant has not shown that it is the owner of the federal trademark registrations, the secondary evidence indicates that these trademark registrations are owned by a company operated by Complainant. Furthermore, the Respondent has conceded ownership in the Response. The Panel, therefore, finds that this is not a disputed issue.

It is well established that the addition of a generic top-level domain name such as ".com" does not create a new trademark or avoid confusion. America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001). Accordingly, the Panel finds that the disputed domain name is identical to the Complainant's trademark.

B. Registered and Used in Bad Faith

While the evidence shows that Complainant registered the TOYTRONIX trade name with the Secretary of State of Arizona, incorporated TOYTRONIX LLC and filed applications to register the trademark prior to Respondent's registration of the disputed domain name, the Complainant has failed to prove that the Respondent knew or had constructive notice of Complainant's trademark rights. Significantly, although filed and published prior to Respondent's registration of the disputed domain name, the trademark registrations of Complainant did not issue until well after Respondent's activities and did not claim use of the TOYTRONIX trademark until 2000, again well after Respondent registered the disputed domain name.

Furthermore, the fact that the disputed domain name was registered by a corporation, TOYTRONIX Corporation supports Respondent's contention that the registration was in good faith and in connection with a bona fide offering of goods.

Complainant merely alleged that the disputed domain name was registered for the purpose of selling, renting or otherwise transferring the domain name to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs. The evidence submitted by Respondent refutes this allegation. More specifically, the evidence submitted by Respondent is consistent with the allegation that upon failure of the business model, the Respondent offered the domain name to the public for purchase and particularly to the Complainant for no more than demonstrated out-of-pocket costs.

None of the other established criteria for proving registration and use in bad faith have been alleged or proven by the Complainant. Having failed to prove that the Respondent registered the domain name in bad faith and is using the domain name in bad faith, the Complaint must also be denied for this reason.

As the Panel has found that the Complainant has failed to demonstrate that domain name was registered and is being used in bad faith, and the Complaint has therefore failed, the Panel has not considered the second element of the Policy.

Finally, with regard to Respondent's allegation of reverse domain name hijacking, the Panel finds that upon consideration of all of the evidence and allegations, there is insufficient facts to conclude that this is a case of bad faith abuse of the administrative process.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Nels T. Lippert
Sole Panelist

Dated April 30, 2004