DECISION

InfoSpace, Inc. v. Alan Dikty

Claim Number:  FA0306000165108

PARTIES

Complainant is InfoSpace, Inc., Bellevue, WA (“Complainant”) represented by Shannon M. Jost, of Stokes Lawrence, PS.  Respondent is Alan Dikty, Chicago, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <infospacecom.net>, registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 20, 2003; the Forum received a hard copy of the Complaint on June 23, 2003.

On June 23, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <infospacecom.net> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 2003 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@infospacecom.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On July 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <infospacecom.net> domain name is confusingly similar to Complainant’s INFOSPACE mark.

2. Respondent does not have any rights or legitimate interests in the <infospacecom.net> domain name.

3. Respondent registered and used the <infospacecom.net> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a global provider of wireless and Internet software and application services to the leading wireless and broadband providers, websites and merchant resellers around the world.  Complainant provides directory services offering access to information about various subjects via the Internet, provides search engines, and provides for brokerage of electronic transactions made via the Internet.  Complainant has used the INFOSPACE mark in conjunction with its services since 1995.  Complainant holds several registrations for the INFOSPACE mark with the U.S. Patent and Trademark Office, including 2,121,439 registered on December 16, 1997 and 2,206,397 registered on December 1, 1998.  Also, Complainant owns registrations for the INFOSPACE mark in more than 18 other countries. 

Complainant owns the <infospace.com> and <infospace.net> domain names and uses them in conjunction with its services. 

Respondent registered the <infospacecom.net> domain name on March 13, 2003.  The disputed domain name does not connect to an active website. 

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 established rights in the INFOSPACE mark through registration with the U.S. Patent and Trademark Office and through use in commerce since 1995. 

Respondent’s <infospacecom.net> domain name is confusingly similar to Complainant’s INFOSPACE mark because the domain name fully incorporates Complainant’s mark and merely adds the term “com.”  The addition of the term “com” is insufficient to avoid a finding of confusing similarity.  See America Online, Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to Complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to Complainant’s mark); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. 

Due to Respondent’s failure to dispute the allegations of the Complaint, the Panel may presume that Respondent lacks any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, Respondent is not affiliated with Complainant and is not authorized or licensed to register or use domain names or marks containing the INFOSPACE mark.  The WHOIS information for the <infospacecom.net> domain name lists Respondent, Alan Dikty, as the registrant; however, it fails to establish Respondent as an “individual, business, or other organization” commonly known by the disputed domain name.  Therefore, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

It can be inferred that Respondent had actual or constructive knowledge of Complainant’s INFOSPACE mark because the mark is internationally recognized, was registered with the U.S. Patent and Trademark Office, and has been used in commerce since 1995.  Respondent’s knowledge of Complainant’s mark is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent has not made use of the disputed domain name.  However, Respondent’s disputed domain name is confusingly similar to Complainant’s famous INFOSPACE mark.  Therefore, the Panel finds that bad faith has been established pursuant to Policy ¶ 4(a)(iii) because any future use of the disputed domain name would do nothing but cause confusion with Complainant’s mark, except in a few limited noncommercial or fair use situations, which are not present in this dispute.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to provide any evidence to controvert Complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with Complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present); see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “[I]t makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <infospacecom.net> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  August 6, 2003, 2003

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