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Generic Top Level Domain Name (gTLD) Decisions |
iLeads.com LLC v. Electronic Marketing
Systems, Inc.
Claim Number: FA0308000187636
PARTIES
Complainant
is iLeads.com LLC, Newport Beach, CA
(“iLeads.com” or “Complainant”) represented by Amanda V. Dwight of Dwight Law Group. Respondent is Electronic Marketing Systems, Inc.,
Carson City, NV (“Electronic Marketing Systems,” “EMS” or “Respondent”)
represented by Mark Sabatini.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <aleads.com>
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as Panelist in this
proceeding.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 21, 2003; the Forum received
a hard copy of the
Complaint on August 22, 2003.
On
August 21, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the Forum that the domain name <aleads.com>
is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne
It, Ltd. d/b/a
Internet Names Worldwide has verified that Respondent is bound by the Melbourne
It, Ltd. d/b/a Internet Names Worldwide
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
August 27, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of September
16, 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@aleads.com by e-mail.
A
Response was received and determined to be complete on September 16, 2003.
However, the electronic copy was received after the deadline
for response.
Complainant
submitted a timely and complete Additional Submission on September 22, 2003.
On September 29, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Houston Putnam
Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Since
at least May 1997, iLeads.com has used the ILEADS.COM mark in interstate
commerce in connection with its services, as outlined
above. iLeads.com is a leader in the business of
providing business information to insurance, financial and mortgage companies
pertaining
to business opportunities via the Internet. iLeads.com registered its domain name
<ileads.com> in or about September 1997.
Over
the past six years, iLeads.com has spent a substantial sum of money advertising
and promoting its services under the ILEADS.COM
mark, which has resulted in the
creation of a great deal of goodwill and popularity for this mark. iLeads.com has a very strong presence on the
Internet, through its ownership and operation of a website under the domain
name <ileads.com>,
and through its ownership interest in several hundred
websites.
As
a result of iLeads.com's long and exclusive use of the ILEADS.COM mark, its
advertising and promotional efforts and expenditures
in connection with the
mark, and the wide recognition achieved for the mark, the public has come to
associate the ILEADS.COM mark
with services originating with, emanating from,
sponsored by or otherwise associated with or approved by iLeads.com. In
addition,
the ILEADS.COM mark also has become an extremely valuable symbol of
iLeads.com with substantial commercial magnetism, and has achieved
secondary
meaning.
[a.] EMS's Domain Name Is Confusingly
Similar To iLeads.com's Registered Trademark ILEADS.COM
Upon
information and belief, on or about April 2000, Respondent registered the
domain name <aleads.com>.
This domain name is nearly identical or confusingly similar to the mark
ILEADS.COM. Indeed, EMS's domain name
is nearly identical in sound, sight, and connotation to iLeads.com's mark. The only difference between the disputed
domain name and the iLeads.com's registered ILEADS.COM mark is the letter
"a" in
place of the letter "i."
EMS's
services, provided at their <aleads.com> website, are identical to
iLeads.com's services. EMS also
provides information pertaining to business opportunities in the mortgage and
insurance industry, via the Internet.
Both parties use the Internet as their sole channel of trade.
Significantly,
EMS's use of their confusingly similar domain name has created confusion in the
marketplace.
[b.] EMS Has No Rights or Legitimate
Interests in the Domain Name <aleads.com>
iLeads.com
has established rights in the ILEADS.COM mark by using this trade name and
trademark in commerce since at least as early
as 1997. In addition, iLeads.com's federal trademark
registration serves as prima facie evidence that iLeads.com is the owner of the
ILEADS.COM
mark and that this mark is valid and entitled to protection.
EMS
is not a licensee of iLeads.com.
iLeads.com has never authorized or licensed EMS to use its trade name or
trademark in any manner. EMS is not
commonly known by the domain name.
Moreover, iLeads.com's rights in its trademark, trade name, and domain
names precede EMS's registration of the name <aleads.com>, which
was registered in April 2000, over three years after iLeads.com's use of its
mark.
Significantly,
EMS is not making a legitimate, noncommercial, or fair use of the domain name <aleads.com>. As discussed in detail below, EMS's sole
intent in adopting this confusingly similar name is to divert consumers to its
website by
creating a likelihood of confusion with Complainant's mark as to the
source, sponsorship, affiliation, or endorsement of Respondent's
website and
services. These actions have been taken
for the purpose of commercial gain at the expense of iLeads.com and its
goodwill in and to its trade
name and trademark.
[c.] EMS Registered and is Using The <aleads.com>
Domain Name in Bad Faith
EMS's
bad faith is further confirmed by their infringement of iLeads.com's
copyrighted materials. In creating its
website, EMS wholesale copied significant portions of iLeads.com's copyrighted
website. Indeed, EMS not only copied
iLeads.com's text, they misappropriated iLeads.com's style and color too. Because of the similarity between
Complainant's trademark and Respondent's domain name, it is evident that
consumers searching for
iLeads.com's services could end up at EMS's website. The content at EMS's website, copied from
iLeads.com's site, further blurs the line of affiliation with Complainant.
After
learning of EMS's registration of the domain name, iLeads.com telephoned and
wrote to EMS advising it that iLeads.com was the
owner of the name and mark,
and that EMS's registration and use of the domain name <aleads.com>
constituted a violation of iLeads.com's right in the ILEADS.COM mark. Complainant requested that EMS transfer the
domain name to iLeads.com. During the
telephone conversation, EMS's representative told iLeads.com's representative
that they too had their "sites ripped
of[f] before" and that
iLeads.com "should learn to live with it." EMS never responded to iLeads.com's letter.
Given
the similarity in the names, the similarity of the services, the wholesale
copying of iLeads.com's website, and EMS's own admission
of copying, it is
clear EMS registered and is using the domain name at issue to attract for
commercial gain, Internet users to its
website by creating a likelihood of
confusion with iLeads.com's mark as to the source, sponsorship, affiliation or
endorsement of
EMS's website and/or service.
This use is unauthorized and constitutes bad faith use and registration
under Policy ¶ 4(b)(iv).
B.
Respondent
EMS
owns and operates several websites on the Internet that involve the marketing
of websites and has done so since 1995.
During
this time EMS has created email databases of consumers that have opted in to
receive information and promotional material related
to investment
opportunities, insurance rate information, mortgage rate information, etc.
This
database is how EMS generates Internet traffic to its proprietary websites.
The
primary website that EMS operates under is <floodgate.com>, which
basically pioneered email marketing in the infancy by
being the first site to
offer businesses the ability to create and build “opt in” email addresses.
In
1996, Floodgate became a primary site for businesses to market their goods and
services over the Internet and was ranked #1 in
many search engines. Some of the
clients that used Floodgate were mortgage companies that wanted to generate
leads.
The
first mortgage company to approach Floodgate to do an email marketing was a
company called Allied Mortgage. In August 1996, Allied
Mortgage contacted
Electronic Marketing Systems through the Floodgate website and inquired about
an email marketing campaign to generate
leads, a test campaign was done and was
proven to be a success and a contract was made to generate leads on a
cost-per-lead basis.
As
business began to grow for Mortgage, the demand also began to grow for
generating high-quality mortgage leads. A website was created
in 1997
specifically for Mortgage Companies to visit and learn about Internet leads
provided by Electronic Marketing Systems.
The
domain name eventually selected to market mortgage leads that was available
through <register.com> was <aleads.com> and that name was
selected for the theme of having the very finest Internet leads.
Another
site owned by EMS is <a1webservice.com>, which creates and hosts websites
for mortgage companies.
In
October 2000, Drew Warmington contacted Electronic Marketing Systems and
accused EMS of copying the <ileads.com> website
and demanded to have
whatever was being copied removed.
Mark
Sabatini, the owner of Electronic Marketing Systems, contacted Carol Nunes the
webmaster for EMS website hosting and development
division and asked Carol if
any of iLeads.com’s website was being copied.
After
inspecting the site Carol Nunes confirmed that there was nothing on the <aleads.com>
website that was copying iLeads.com, this information was relayed back to Drew
Warmington.
Mr.
Warmington was then asked to please provide specific information as to what was
being copied so it could be properly investigated
and Mr. Warmington provided
no information except that one of his demands was that EMS release the domain
name to iLeads.com for
nothing.
Mr.
Warmington was then advised that if he was interested in purchasing the domain
name that all reasonable offers would be considered.
Mark
Sabatini explained candidly that there were other people that are selling
mortgage leads on the Internet and or copying the concept
of selling mortgage
leads to mortgage companies and that Mr. Warmington's idea of selling leads was
not unique or any different than
any other company selling Internet leads to
financial companies.
On
October 3, 2000 Drew Warmington registered the domain name <aleads.net>
despite having no affiliation at all with <aleads.com>.
Every
Letter before “leads.com” does not belong to Drew Warmington.
A
look up done at <register.com> indicates that every letter before
“lead.com” is usually always registered to a lead company
and or reseller of
domain names.
Mr.
Warmington seems to feel that people are mistakenly finding the <aleads.com>
website instead of <ileads.com>, which is not true.
1. There has never been a customer that
<aleads.com> has acquired that feels they are doing business with
iLeads.com nor has there been any proof or affidavits furnished to support any
such theory.
2. There has never been any indication
by Drew Warmington of a case or incident or any person or company being
misdirected to the <aleads.com> website during the last five years
of Internet business.
3. The <aleads.com> website
and <ileads.com> website are completely different and are in no way
alike.
4. A search for Internet leads on
Google conducted on September 13, 2003 revealed 640,000 matches: 640,000
websites/companies all selling
Internet leads.
5. “iLeads” clearly stands for
“Internet leads” and it is highly unlikely that someone is going to replace the
"I" with an
"A" when typing the domain name
<ileads.com>.
6. It is Respondent’s belief that Mr.
Warmington is attempting to steal EMS’s domain name.
Upon
close review of the <ileads.com> website there is no copyright or
trademark infringement made by the <aleads.com> website. The mere
thought of there being any lost business by <ileads.com> to <aleads.com>
is absurd.
There
is no business that comes to the <aleads.com> website from search
engines or people that mistype the <ileads.com> website by mistakenly
typing "a" instead of "i."
The
only business the <aleads.com> website does is from its existing
client database and or from direct mail/email marketing to mortgage companies.
The
main purpose of the website is to provide an Internet presence and distribute
leads to subscribers from the <aleads.com> domain.
There
is no factual information that there is any loss of business between the two
websites, especially since there are over 600,000
sites now selling leads.
C.
Additional Submissions
Complainant
submitted an Additional Submission on September 22, 2003. This was particularly helpful in pointing
out phrases and words Respondent copied from Complainant’s website.
FINDINGS
While Complainant proved the domain name
was registered and being used in bad faith, it failed to prove:
(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.
DISCUSSION
The Forum received a timely hard copy of the
Response. However, the electronic version was received after the deadline for
the Response.
Exercising its discretion, the Panel has decided to consider the
response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000)
(finding that any weight to be given to the lateness of the Response is solely
in the discretion
of the Panelist); see also Univ. of Alberta v. Katz,
D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a response
which was one day late, and received before a Panelist
was appointed and any
consideration made). The delay in this
case was slight and one copy of the Response was timely. As a general rule, a Panelist should decide
a case on the merits as long as the delay has not worked any prejudice. This delay has not worked any prejudice.
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.
Respondent
registered the <aleads.com> domain name on April 23, 2000. Complainant has failed to establish any
rights in the mark prior to Respondent’s registration of the domain name. See
Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO March 30, 2001) (finding
that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate
Respondent’s
registration . . . of the domain name”); see also Razorbox, Inc.
v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (noting that as Respondent’s
registration of the <razorbox.com> domain name predated
Complainant’s
alleged rights (Respondent registered the disputed domain name more than two
years prior to Complainant’s stated first
use in commerce). Complainant did not have standing to bring a
claim under the UDRP).
The parties have spent much time discussing whether or
not the initial letter in the domain names (which are otherwise the same)
sufficiently
differentiates them. This
Panel holds that it does, especially since the letter “a” and the letter “i”
are not very close on the keyboard and they really
don’t look very much
alike. The letter “a” is not commonly
substituted for the letter “i” when typing.
For the reasons discussed below, it is clear to this Panelist Respondent
wanted to compete with Complainant and used Complainant’s
intellectual property
to do so (the Complainant’s trademark and copyrighted HTML code). However, this does not automatically mean
the domain names in question are confusingly similar.
Complainant and Respondent are in the business of
selling mortgage leads. Respondent’s
use of the <aleads.com> domain name to
sell leads over the Internet indicates a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), which demonstrates Respondent’s rights
to and legitimate interests in
the disputed domain name for purposes of Policy
¶ 4(a)(ii). See
Verkaik v. Crownonlinemedia.com,
D2001-1502 (WIPO March 19, 2002) (finding that Respondent’s use of the disputed
domain name to make a bona fide offering of services bestowed rights and
legitimate interests in the domain name); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000)
(“By September 1999, when first approached by the Complainant, the Respondent
or its predecessors
had used the <bankinternet.com> website for almost 4
years, thus demonstrating ‘a bona fide offering of goods and
services’”).
Respondent
uses the term “leads” in the generic sense to refer to the sale of leads over
the Internet. Respondent’s use of the
generic term “leads” establishes rights to and legitimate interests in the <aleads.com> domain name under Policy ¶ 4(a)(ii). See Energy Source Inc. v. Your Energy Source,
FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights
and legitimate interests in the domain name where “Respondent
has persuasively
shown that the domain name is comprised of generic and/or descriptive terms,
and, in any event, is not exclusively
associated with Complainant’s business”);
see also CRS Tech. Corp. v. CondeNet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “the first to
register a domain name containing a generic or descriptive
mark should prevail
absent bad faith and a lack of legitimate interest").
Respondent copied significant portions of
Complainant’s website, including Complainant’s trademark and certain
phrases. Respondent admitted this in a
telephone conversation with Complainant (Respondent said Complainant should
“learn to live with their
website being ripped off” or words to that
effect). In its Additional Submission,
Complainant produced evidence Respondent copied business forms from
Complainant’s website because the
<aleads.com> website
contained forms that read, “What is the best time for an iLeads.com representative
to call?” To this Panel, there is no
doubt Respondent improperly used Complainant’s registered trademark and
(poorly) copied HTML code from
Complainant’s website. Respondent did all of this with the intention of competing with
Respondent.
Respondent’s copying significant portions of
Complainant’s website and trademark to compete in the lead-selling business
with Complainant
establishes Respondent’s bad faith registration and use of the
<aleads.com> domain name
pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v.
Unlimited Latin Flavors, Inc.,
FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of
variation from Complainant's marks suggests that Respondent,
Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business); see also Lubbock Radio
Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000)
(concluding that domain names were registered and used in bad faith where
Respondent and
Complainant were in the same line of business in the same market
area).
Respondent’s
operation of a commercial website at the <aleads.com> domain name demonstrates Respondent’s bad
faith registration and use under Policy ¶ 4(b)(iv). See
Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain
name to offer goods competing
with Complainant’s illustrates Respondent’s bad
faith registration and use of the domain name, evidence of bad faith
registration
and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used
the domain name, for commercial gain, to intentionally
attract users to a
direct competitor of Complainant).
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered Arbitrator,
Panelist
Dated: October 13, 2003
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