Generic Top Level Domain Name (gTLD) Decisions

Infinity2, Incorporated.
COMPLAINANT,

vs.

Total Health & Wellness
RESPONDENT.

DECISION
Claim Number: FA0005000094867

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is INFINITY2.NET, registered with Network Solutions, Inc. (“NSI”).

PANELIST

            Charles A. Kuechenmeister.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/19/2000; The Forum received a hard copy of the Complaint 05/19/2000.

On 05/26/2000, NSI confirmed by e-mail to The Forum that the domain name “INFINITY2.NET” is registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy (“UDRP”).

On 05/24/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/19/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

The Response was received by The Forum on 06/13/2000.  This established 06/18/2000 as the deadline for any supplemental filing by Complainant.  The Forum Rule 7.  On 06/19/2000, at about 6:35 p. m. (time zone not specified), The Forum received via email Complainant's Supplemental Statement of Complainant.  The required filing fee and a hard copy were received later.  Even the electronic submittal of this pleading was late, by a full day.  The submittal deadlines prescribed by The Forum's procedural rules are an integral part of the ICANN dispute resolution process.  Prompt resolution of disputes coming within the framework of the UDRP is an important objective of the process, and permitting late filings without good cause does not serve this objective.  No good cause for the late filing being shown, the Panelist orders that the Supplemental Statement of Complainant shall not be considered in the resolution of this matter.

On 06/21/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Charles A. Kuechenmeister as Panelist(s).

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has rights to use the mark Infinity² (with a superscript “2”) and Infinity2 (depending on the promotion medium) in the network marketing of its line of whole-food supplements and consulting services in the area of nutrition and physical fitness, in the United States and Canada.  Complainant has established written policies and procedures applicable to itself and all of its independent distributors which, among other things, prohibit distributors from using Complainant's Infinity2 name, in an independent web site, Internet presence, or other electronic network system presence, without Complainant's prior written approval, and which provide that any electronic presence must not mislead viewers into believing they are viewing Complainant's corporate home page.  Respondent is a distributor of Complainant's products and is subject to these policies and procedures.  On or about September 28, 1997, Respondent's principal, Jordan Cassell, registered the domain name INFINITY2.NET with NSI in the name of Respondent.  Mr. Cassell has been advised that his use of the INFINITY2.NET domain name and the structure of his website are unauthorized and unlawful, but he has refused to make any changes.  Based upon the foregoing, Complainant asserts (1) that the contested domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) that Respondent has no rights or legitimate interests in respect of the contested domain name; and (3) that the contested domain name has been registered and is being used in bad faith.  Complainant also alleges that Respondent's actions as above alleged constitute trademark infringement and unfair competition.  15 U.S.C. § 1125(a), and that false and misleading content in Respondent's website is causing legal harm to Complainant.

B. Respondent

Respondent notified Complainant in 1996 that it intended to use Complainant's INFINITY2 name in the name of its website in the following form and content

emporium.turnpike.net/~health/infinity2

and

http://emporium.turnpike.net/~health/infinity.

and Complainant did not object to or oppose the same.  On September 28, 1997, without notice to Complainant, Respondent registered the domain name INFINITY2.NET with NSI and shortly thereafter converted its website to that name.  Since then, Respondent has invested considerable time and money in the development of its website, which efforts have generated significant revenues for Complainant.  Complainant is now barred by the doctrines of estoppel and equity from objecting to Respondent's use of the contested domain name.  Response, pp. 7-8.  Additionally, Respondent has established its rights or legitimate interests in the contested domain name within the meaning of UDRP §4(c) in that before notice of the instant dispute it used the contested domain name in connection with its bona fide offering of its goods and services, and that it has made a legitimate, fair use of the name, without intent to misleadingly divert consumers or to tarnish the INFINITY2 name or mark.  See, UDRP §4(c)(i) & (iii).  Response, pp 3-4.  Finally, Respondent's registration of the contested domain name even in breach of its distributor agreement with Complainant is not bad faith.  Response, p. 6.

FINDINGS

Complainant has rights to use the mark Infinity² (with a superscript “2”) and Infinity2 (depending on the promotion medium) in the network marketing of its line of whole-food supplements and consulting services in the area of nutrition and physical fitness, in the United States and Canada.  At some time, not shown from the evidence, Complainant established the domain name ININITY2.COM for its uses.  Complaint, pp. 1, 4.  Complainant has established written Policies and Procedures applicable to itself and all of its independent distributors which, among other things, prohibit distributors from using Complainant's Infinity2 name in an independent web site, Internet presence, or other electronic network system presence, without Complainant's prior written approval, and which provide that any electronic presence must not mislead viewers into believing they are viewing Complainant's corporate home page.  Respondent is a distributor of Complainant's products and is contractually bound to honor the Policies and Procedures, as amended from time to time by Complainant.  Respondent asserts that the Policies and Procedures cited in the Complaint were not adopted until 1998 (Response, pp. 2-3.) but the Distributor Application and Agreement which Respondent signed provides for future changes and commits Respondent to use and, by clear implication be bound by, the current version.  Complaint, Exhibit B, p. 2.  Further, although the 1998 version, which is binding on Respondent, added an explicit prohibition to distributors using INFINITY2 in any form in a domain name, even the version in effect in 1996, when Respondent became a distributor, prohibited distributors from maintaining "a website, Internet presence, or other electronic network system presence containing any Infinity2 name,. . . without Complainant's prior written approval" and provided that "any electronic presence must not mislead viewers into believing that they are viewing the Infinity2 Corporate Home Page."  Response Exhibit D, ¶10.D.  The Policies and Procedures also contain a non-waiver provision, authorizing Complainant to assert a breach at any time, even after a prior waiver.  Response Exhibit D, §12.B for 1996 version; Complaint Exhibit A, §13.B for 1998 version.

By letter dated 17 June 1996, Respondent notified Complainant that it intended to use Complainant's INFINITY2 name in the name of its website in the following form and content:

http://emporium.turnpike.net/~health/infinity2

and

http://emporium.turnpike.net/~health/infinity.

Complainant did not object to or oppose the same.  On or about September 28, 1997, without notifying Complainant or obtaining its consent (Complaint, p. 4), Respondent's principal, Jordan Cassell, registered the domain name INFINITY2.NET with NSI in the name of Respondent.  Shortly after that, Respondent converted its website to that domain name.  Response, p. 2.  At the time he did so, Mr. Cassell was on notice of the terms of his agreement with Complainant, including the applicable provisions of Complainant's Policies and Procedures, as set forth above.  Complainant has notified Respondent that its use of the INFINITY2.NET domain name is unauthorized and unlawful, but he has refused to make any changes.

DISCUSSION

Paragraph 4(a) of the of the UDRP requires Complainant to prove each of the following three elements in order to demonstrate claims 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; and

(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

INFINITY2.NET is on its face identical to or confusingly similar to Complainant's INFINITY2 tradename.  It is in fact the same name as Complainant's said name.

Rights or Legitimate Interests

Respondent asserts that it has established its rights or legitimate interests in the contested domain name within the meaning of UDRP ¶4(c) in that before notice of the instant dispute it used the contested domain name in connection with its bona fide offering of its goods and services.  See, UDRP ¶4(c)(i).  If this contention is sustained, it effectively trumps all other elements of the Complaint and requires a finding that Complainant is not entitled to the relief requested in these proceedings.  That provision reads in relevant part as follows:

. . . Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights or;

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As subparagraph (i) is written, it appears that "bona fide" modifies the term "offering of goods or services," and does not refer to or modify the terms "use of" or "demonstrable preparations to use."  Further, it is undisputed that Respondent registered and began using the contested domain name for its website late in 1997, well before notice of the Complaint in these proceedings was served on it in May 2000, and well before Complainant contacted Respondent about the registration early in 1998.  Nevertheless, when Respondent took those actions it was on notice of the terms of its agreement with Complainant, including the applicable provisions of Complainant's Policies and Procedures, as set forth above, which clearly, unambiguously and expressly, even in the 1996 version, prohibited it from using the INFINITY2 name in any website, Internet presence, or other electronic network system presence.

Respondent asserts that Complainant's failure to object to Respondent's use of http://emporium.turnpike.net/~health/infinity2 in 1996 is equivalent to Complainant's consent to Respondent's use of INFINITY2.NET, at least for purposes of determining "notice of dispute."  The two names are materially different, however, in that Complainant's trademark name in the latter stands utterly alone and undiluted by the several other terms and names unique to Respondent's operations and identity in the former.  Respondent's breach of its agreement with Complainant by registering and using INFIITY2.NET is simply not subject to reasonable debate.  Respondent's claim in these proceedings that it had no notice of a dispute about such use in 1997 is rejected.  It knew it did not have Complainant's consent to use INFINITY2 in that form, and it knew or should have known that Complainant would surely dispute such use immediately upon learning of the same.

The ICANN dispute resolution process is intended only for the relatively narrow class of cases of "abusive registrations," and domain name disputes between "legitimate" claimants are intended to be relegated to the courts.  4 McCarthy on Trademarks §25:74.2, n.5 (2000)  The conduct of Respondent in this case, however, is abusive.  Because its registration of INFINITY 2.NET was so clearly in violation of its agreement with Complainant, it would be absurd to hold on these facts that it had any right or legitimate interest to the contested domain name simply because it registered and used it before telling Complainant that it done so.  The purpose of UDRP subparagraph 4(c)(i) is to exclude from the UDRP process cases of entities who use or prepare to use a domain name without knowledge that their doing so was or would be disputed.  The purposes and intent of that provision have been met here.  Finally, Respondent's failure to notify Complainant of its registration and use of INFINITY2.NET abrogates Respondent's contention that that its offering of goods and services under these circumstances was is good faith.

Respondent also asserts that it has made a legitimate, fair use of the name, without intent to misleadingly divert consumers or to tarnish the INFINITY2 name or mark.  See, UDRP §4(c)(iii).  Contrary to Respondent's assertion in this regard, its intent appears to be just the opposite, that is, to attract consumers to Respondent's website by using Complainant's trademark as the sole component of its domain name except only for the domain level designation.  The intent to divert consumers is manifest from the name itself, which suggests clearly and compellingly that that the website belongs not to an entity that simply distributes Infinity2 products but to one that is Infinity2 itself.

Respondent's claim of right or legitimate interest in the contested domain name is rejected.

Bad Faith

As set forth above in the discussion of right or legitimate interest, Respondent's use of exactly the same name as Complainant's trademark evidences an intent to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark. Such intent is manifest from the name itself.

DECISION

BASED UPON the findings above set forth, the Panelist hereby orders that the relief requested by Complainant be GRANTED, and that the contested domain name, INFINITY2.NET, be transferred from Respondent to Complainant.

Complainant's allegations that Respondent's actions constitute trademark infringement and unfair competition in violation of 15 U.S.C. §1125(a), and that false and misleading content in Respondent's website is causing legal harm to Complainant, are beyond the scope of this proceeding and are not addressed.

Dated:  5 July 2000             Honorable Charles A. Kuechenmeister, Arbitrator