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Generic Top Level Domain Name (gTLD) Decisions |
InfoSpace, Inc. v. Vortex Networks
Claim Number: FA0401000223035
PARTIES
Complainant
is InfoSpace, Inc. (“Complainant”)
represented by Pallavi Mehta Wahi, of Stokes Lawrence, PS 800 Fifth Ave., Suite 4000, Seattle, WA
98104-3179. Respondent is Vortex Networks (“Respondent”), 614
East Highway 50, Suite 112, Clermont, FL 34711.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <netauthorize.net>
and <netauthorize.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Jeffrey
M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 2, 2004; the Forum received
a hard copy of the
Complaint on January 5, 2004.
On
January 6, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com
confirmed by e-mail to the Forum that the domain names <netauthorize.net> and <netauthorize.com> are
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and
that the Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.com 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
January 12, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of February 2, 2004 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@netauthorize.net and
postmaster@netauthorize.com by e-mail.
A
timely Response was received and determined to be complete on February 1, 2004.
A
timely Additional Submission was received from Complainant and was determined
to be complete on February 5, 2004.
On February 10, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Jeffrey M.
Samuels as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
InfoSpace, Inc. alleges in its Complaint that it is a pre-eminent global
provider of wireless and Internet software and
application services. Among other things, Complainant provides
directory services offering access to information about various subjects via
the Internet,
provides search engines for obtaining data on the Internet, and
provides for brokerage of electronic commerce transactions conducted
via the
Internet.
The
Complaint asserts that Complainant and its predecessor in interest, Go2Net,
Inc., have used a family of marks that incorporate
the AUTHORIZE.NET
designation since at least as early as November 1996, in connection with
electronic authorization, processing,
and management software and services
relating to credit card transactions over the telephone and via the Internet in
the U.S. and
abroad. Over the years,
Complainant has invested substantial resources and millions of dollars in
promoting its services under the AUTHORIZE.NET
marks.
Complainant
indicates that it is the owner of a number of U.S. trademark registrations for
marks that consist in whole or in part
of the term AUTHORIZE.NET.[1] Complainant also maintains that it owns the
following domain names:
<authorize.net> and <authorizenet.com>.
Complainant
alleges that the domain names in dispute are substantially identical or
confusingly similar to its AUTHORIZE.NET marks. It maintains that transposing elements of Complainant’s mark does
not distinguish Respondent’s domain names or render them dissimilar
from
Complainant’s AUTHORIZE.NET marks.
Complainant
further argues that Respondent has no rights or legitimate interests in the
disputed domain names. Upon information and
belief, Complainant asserts that
Respondent has never been known by or operated a business under the <netauthorize.net>
and <netauthorize.com> domain names and has no trademark rights in
the terms; that Respondent is not authorized by Complainant to use the
AUTHORIZE.NET
mark or any variations thereof; and that since registering the
disputed domain names, Respondent does not appear to have operated
any business
in connection with the domain names or to have connected it to an operative
website.
With
respect to the issue of “bad faith” registration and use, Complainant contends
that its marks are well-known worldwide and, thus,
“there can be no dispute
that Respondent is aware of and familiar with Complainant and Complainant’s
marks.” Complainant also asserts
that the use of a domain name confusingly
similar to a registered mark to divert Internet users to a commercial website
is neither
a bona fide offering of goods or services, pursuant to Policy ¶
4(c)(i), nor a legitimate noncommercial or fair use, pursuant to
Policy ¶
4(c)(iii). Finally, Complainant notes that
many ICANN panels have found that registration coupled with inactivity may
constitute evidence of
“bad faith” under the applicable policy.
B.
Respondent
Respondent,
in its Response, indicates that it registered the domain names in issue for
internal use only and had not heard of Complainant
prior to its receipt of the
“cease and desist” letter of November 3, 2003. (See Appendix C to
Complaint.) According to Respondent,
the power of trademark owners to protect their rights “IS A RESTRAINT ON TRADE,
AND THEREFORE SHOULD ONLY
BE EXERCISED TO PROTECT A CLEAR, ESTABLISHED, WELL
FOUNDED AND LIGITAMATE (sic) INTEREST.”
Respondent
further argues that it used the disputed domain names in connection with a bona
fide offering of goods or services and
has several legitimate noncommercial and
fair use purposes for its domain names.
Finally,
Respondent maintains that it did not register “or”[2]
use the domain name in bad faith, contending that none of the circumstances set
forth in Policy ¶ 4(b) is applicable.
C.
Additional Submissions
In
its Additional Submission, Complainant notes that Respondent offered no
evidence in support of any of its arguments.
FINDINGS
Based on its
review of all the evidence and applying the relevant policy, the Panel finds
that: (1) the domain names in issue are
confusingly similar to marks in which
Complainant has rights; (2) Respondent has no rights or legitimate interests in
respect of
the domain names; and (3) the domain names have been registered and
are being used in bad faith.
DISCUSSION
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.
The Panel
concludes that the disputed domain names – <netauthorize.net> and <netauthorize.com>
– are confusingly similar to Complainant’s AUTHORIZE.NET marks. It is clear
that the domain names differ from the AUTHORIZE.NET mark
only in the
transposition of the terms “Authorize” and “Net” and in the addition of the
top-level domains “.com” and “.net.” It
is equally clear, however, based on earlier ICANN panel decisions, that such
differences do not avoid a finding of “confusingly
similar.” See, e.g., NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001)
(finding the domain name <nationalrentalcar.com> confusingly similar to
the mark NATIONAL
CAR RENTAL); Playboy
Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the
domain name <channelplayboy.com> confusingly similar to the mark THE
PLAYBOY
CHANNEL); Pomellato S.p.A. v.
Tonetti, D2000-0493 (WIPO July 7, 2000) (ordering transfer of domain name
<pomellato.com> based on mark POMELLATO).
Based on its use
of, and registrations covering, its AUTHORIZE.NET marks, the Panel finds that
Complainant has rights in its AUTHORIZE.NET
marks.
As noted by
Complainant in its “Additional Submission,” there is absolutely no evidence[3]
in support of Respondent’s claims that it uses the domain names in connection
with a bona fide offering of goods and services or
that it has several
noncommercial and fair uses for the names. Indeed, such arguments are
inconsistent with Respondent’s assertion
that it simply registered the domain
names for internal use and has never posted any information on either
site. Moreover, the Panel’s finding
that the domain names are confusingly similar to Complainant’s marks would bar
Respondent from succeeding
on any “bona fide offering of goods or services”
claim, even if the evidence supported such a claim. See, e.g., U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003)
(holding that respondent’s use of complainant’s mark and the goodwill surrounding
that mark
as a means of attracting Internet users to an unrelated business was
not a bona fide offering of goods or services).
While
the Panel finds that none of the specific circumstances set forth in Policy ¶
4(b) is applicable, it, nevertheless, concludes
that the requisite “bad faith”
registration and use exists. It is well
established that the passive holding of a domain name supports a finding of
“bad faith” registration and use. See,
e.g., DCI S.A. v. Link Commercial
Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that respondent’s passive
holding of domain name satisfies the bad faith requirement);
Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that respondent made no use of the domain
name or website that connects with the
domain name and that passive holding of
a domain name permits an inference of registration and use in bad faith).
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 <netauthorize.net> and <netauthorize.com>
domain names be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: February 24, 2004
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