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Generic Top Level Domain Name (gTLD) Decisions |
InfoSpace, Inc. v. Roger H. Smith
Claim Number: FA0403000245959
PARTIES
Complainant
is InfoSpace, Inc. (“Complainant”),
represented by Leslie C. Ruiter, of Stokes Lawrence, P.S., 800 Fifth Ave.,
Suite 4000, Seattle, WA 98104.
Respondent is Roger H. Smith (“Respondent”),
represented by Roger H. Smith, 8 Rue
Du Chateau, Alison Viejo, CA 92656.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <authorizenet.net>,
registered with Capital Networks PTY LTD.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Jonas
Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 16, 2004; the Forum received
a hard copy of the
Complaint on March 19, 2004.
On
March 17, 2004, Capital Networks PTY LTD confirmed by e-mail to the Forum that
the domain name <authorizenet.net>
is registered with Capital Networks PTY LTD and that the Respondent is the
current registrant of the name. Capital
Networks PTY LTD has verified that Respondent is bound by the Capital Networks
PTY LTD 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
March 23, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 12,
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@authorizenet.net by e-mail.
A
timely Response was received and determined to be complete on April 27, 2004.
On
April 29, 2004 Additional Submission was received from Complainant. The submission
was received in a timely manner according to
The Forum’s Supplemental Rule 7.
On
May 4, 2004 Additional Submission from Respondent was received. Also this submission
was received in a timely manner.
On May 10, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Jonas Gulliksson
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant
provided the following in the Complaint as its contentions:
Complainant,
InfoSpace, Inc. is a pre-eminent global provider of wireless and Internet
software and application services to the leading
wireless and broadband
providers, web sites and merchant resellers around the world. 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.
Complainant,
itself and through its predecessor in interest Go2Net, Inc. (collectively,
“InfoSpace” or “Complainant”), has been using
a family of marks that each
incorporate the AUTHORIZE.NET designation (collectively, the “AUTHORIZE.NET
Marks”) 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 worldwide. Over the years, Complainant has invested
substantial resources
and several millions of dollars in promoting its services in connection with
the AUTHORIZE.NET Marks. As a
result of Complainant’s extensive use,
advertising and promotional efforts, Complainant’s AUTHORIZE.NET Marks are
well-known and
are recognized by consumers around the world as signifying and
representing Complainant’s services.
Complainant
is the owner of the below United States trademark registrations:
Mark
|
[Reg.] No.
|
[Int’l]
Class(es)
|
First Use
|
Goods/Services
|
AUTHORIZE.NET
|
2,422,317
|
009, 036
|
November 1996
|
Computer software for use in electronic authorization,
processing and management of credit card and electronic check transactions
conducted via
a global computer network, in Class 009. Global
financial services in the nature of electronic authorization, processing,
and management of credit card and electronic
check transactions via a
global computer network, in Class 036 |
AUTHORIZE.NET
|
2,749,994
|
036
|
November 1996
|
Financial services in the nature of electronic authorization,
processing, and management of credit card and electronic check transactions
via a global computer network.
|
AUTHORIZE.NET WHERE THE WORLD DOES BUSINESS ON THE WEB & Design
|
2,441,859
|
009, 036
|
November 1996
|
Computer
software for use in electronic authorization, processing and management of
credit card and electronic check transactions
conducted via a global computer
network, in Class 009. |
AIRPAY BY AUTHORIZE.NET
|
2,746,969
|
009, 036
|
July 21, 2001
|
Computer
software for facilitating financial transactions in the fields of electronic
payments and electronic software sales
that may be downloaded from wireless
and global computer networks, including the internet, in Class 009. Processing
and transmission of electronic payments and payment information via wireless
and global communication networks, including
the internet, in Class 036. |
POCKET AUTHORIZE.NET
|
2,685,523
|
009, 036
|
December 17, 2000
|
Computer
software, namely, a software application for use with electronic authorization,
processing, and management of credit
card transactions via telephone and
global communication networks, including the internet, in Class 009. Global
financial services in the nature of electronic authorization, processing,
and management of credit card transactions
via telephone and global communication
networks, including the internet, in Class 036 |
AUTHORIZE.NET WHERE THE WORLD TRANSACTS
|
2,804,321
|
036
|
March 31, 2001
|
Financial services in the nature of electronic authorization,
processing, and management of credit card, debit card, stored value
card,
smart card, electronic check services, and automated clearing house transactions,
all via a global computer network, in
Class 036.
|
.
. . .
Complainant
also offers these services and software via its Internet websites located at
the domain names <authorize.net>
and <authorizenet.com>. Copies
of the “Whois” database records for these domain names are attached as Appendix
E to the Complaint. Excerpts from the Complainant’s
<authorize.net> website illustrating the services offered by
Complainant are attached as Appendix F to the Complaint. A declaration of Roy
Banks,
General Manager of Complainant’s Authorize.Net services, regarding
Complainant’s re-seller’s contracts is attached as Appendix G.
This
Complaint is based on the following factual and legal grounds: ICANN Rule
3(b)(ix).
. . . Policy ¶ 4(a)(i).
Respondent
has registered the domain name <authorizenet.net>,
which is substantially identical and/or confusingly similar to Complainant’s
AUTHORIZE.NET Marks, and <authorizenet.com>
and <authorize.net> domain
names. The AUTHORIZE.NET Mark is the primary, distinctive element of the <authorizenet.net> domain name, as
well as Complainant’s <authorize.net>
and <authorizenet.com> domain
names. That Respondent inserted a “net” in the subject domain name does not
materially change the commercial impression of
the domain name. Indeed,
Respondent appears to have permuted “AUTHORIZE.NET” to capitalize on the
traffic of Internet users who mistype
and/or misspell Complainant’s domain
names Respondent has simply repeated the word “net” in the middle of the name
in an attempt
to induce Internet users into believing that Respondent’s
website is associated with or authorized by Complainant. However, Respondent
neither is directly affiliated with Complainant nor has Respondent been granted
the right or permission to use the well-known AUTHORIZE.NET
mark.
That
Respondent merely repeated the word “net” as compared to Complainant’s
AUTHORIZE.NET mark does not materially alter the commercial
impression of the domain
name. The mere addition of generic terms to the domain name is not sufficient
to distinguish it from Complainant’s
AUTHORIZE.NET trademark or to create a new
distinct mark capable of overcoming a finding of confusing similarity. See,
e.g., Disney Enterprises, Inc. v. Gary
Hamilton, NAF Case No. FA0302000145226 (Mar. 17, 2003) (ordering transfer
of domain name <disneymania.com>);
Bank of America Corp. v. Out Island
Properties, Inc., NAF Case No. FA0304000154531 (June 3, 2003) (ordering
transfer of domain name <bancamericaairports.com>);
Infospace, Inc. v. Justin Jacobs, NAF
Case No. FA0307000175200 (Sept. 15, 2003) (ordering the transfer of domain name
<dogpilekeys.com>). The mere
transposition of terms or addition of a top level domain such as “.net” does
not avoid a finding of “confusingly similar.”
See, InfoSpace, Inc. v. Vortex Networks, NAF Case No.: FA0401000223035
(transferring “<netauthorize.net> and
<netauthorize.com>” to owner of
Authorize.net (Complainant herein).
Similarly,
that Respondent attaches the top level domain name <.net> to the AUTHORIZE.NET Mark does not materially change
the commercial impression of the domain name. It is well established that the
top level of the domain name, such as <.net>, does not affect the domain
name for the purpose of determining whether it is
identical or confusingly
similar to the Complainant’s mark. See, e.g., Pomellato S. p. A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(ordering transfer of domain name <pomellato.com>
based on Complainant’s POMELLATO Mark); Rollerblade,
Inc v. McCrady, D2000-0429 (WIPO June 25, 2000) (ordering transfer of
domain <rollerblade.net> based
on Complainant’s ROLLERBLADE mark). The mere supplanting of <.info> or <.com> or <.net>
to the domain name is not sufficient to distinguish it from Complainant’s
AUTHORIZE.NET trademark or to create a new distinct mark
capable of overcoming
a finding of confusing similarity.
Further,
prior decisions under the ICANN Policy have consistently held that a domain
name comprised of a common misspelling of the
trademark and domain name of
another will be confusingly similar to the trademark in question and the domain
name of the trademark
owner. In the case of InfoSpace,
Inc. v. Alan Dikty, NAF Case No. FA0306000165108, the panel ordered
transfer of respondent’s <infospacecom.net>
domain name based on confusing similarity to Complainant’s INFOSPACE mark and <www.infospace.com> and <www.infospace.net> domain names.
Similarly, in InfoSpace, Inc. v. TBD
Entertainment, NAF Case No. FA0306000165120, the panel ordered transfer of
respondent’s <wwwdogpile.net>
domain name based on confusing similarity to Complainant’s DOGPILE mark and <www.dogpile.com> and <www.dogpile.net> domain names).
See also, InfoSpace, Inc. v. Kristanto
Siswanto, NAF Case No. FA0212000135607, (respondent’s <doggpile.com> domain name was confusingly similar to
InfoSpace’s registered DOGPILE mark, notwithstanding the inclusion of an
additional “g”
in the domain name.); InfoSpace,
Inc. v. TBD Entertainment, NAF Case No. FA0304000153627 (ordering transfer
of respondent’s <infospace.net>
and <wwwinfospace.net> domain
names based on confusing similarity to Complainant’s INFOSPACE mark and <www.infospace.com> and <www.infospace.net> domain names).
Similarly,
in Pharmacia & Upjohn AB v. Dario H.
Romero, WIPO Case No. D2000-1273, the Panel compared Respondent’s <pharmaciae.com> with complainant’s
registered mark PHARMACIA, and noted that "the only difference between the
two signs it [sic.] the letter
"e" which in the domain name of the Respondent
is added to the mark of the Complainant." The Panel found Respondent’s
domain name to be "nearly indistinguishable, both in writing and in pronunciation"
from complainant’s mark, and concluded
that "the domain name of the
Respondent is confusingly similar with the Complainant’s mark PHARMACIA."
. . . Policy 4(a)(ii).
The
term “AUTHORIZE.NET” has no common meaning in the Internet context other than
as an indicator of the source of Complainant’s services.
Complainant has
offered its services in connection with its well-known AUTHORIZE.NET marks and
domain names since at least as early
as November of 1996. Respondent registered
the <authorizenet.net> domain
name on November 27, 2001, five years after Complainant began using its
AUTHORIZE.NET mark and domain names. Prior to the registration
date of Respondent’s
domain name, Complainant and its wholly owned subsidiary Go2Net, Inc. had
gained world-wide recognition as a
global provider of information services, and
particularly services relating to Internet transactions, which renown is
embodied in
the AUTHORIZE.NET mark. An NAF panel has held that Complainant’s
mark is “sufficiently well-known that someone searching on the Internet,
whether from the United States or abroad, may assume an association with
Complainant”. InfoSpace, Inc. v. Sunwave
Communications c/o. Donna McCole, NAF Case No. FA0309000198015 (Nov. 2003).
Respondent
has never been granted permission to operate a business under the AUTHORIZENET.NET
or <authorizenet.net> names and
has no trademark or service mark rights in the terms. Respondent has no
relationship to Complainant and is not permitted
or licensed to use the
AUTHORIZE.NET mark or any variations thereof. Complainant attaches as Exhibit G
its affidavit in support of
this claim. Respondent replied to Complainant’s
cease and desist notices with two calls and one letter, the sum of which was
that
Registrant declined to transfer the domain name and claimed to be a
licensed re-seller/distributor of Complainant’s credit card processing
services. Registrant is in fact NOT a licensed re-seller/distributor and
Registrant has provided no proof whatsoever (and cannot
provide such proof)
that it is a licensed re-seller/distributor. Even if Registrant were a licensed
re-seller/distributor, which
Complainant denies, all of Complainant’s
reseller/distributor contracts for the AUTHORIZE.NET services contain clear
terms that prohibit
use of the AUTHORIZE.NET trademarks in any way that alters
or dilutes the marks, including use or registration in a domain name.
See
sample terms of Complainant’s re-seller contract, included in Exhibit G. Panels
have held that even licensed resellers of goods
lack rights and legitimate
interests in domain names that encompass another's mark. See Toyota Jidosha Kabushiki Kaisha t/a Toyota
Motor Corp. v. Aebersold, FA 113316 (Nat. Arb. Forum July 10, 2002)
(“Respondent cannot use Complainant's trademark in a domain name when the
Respondent,
even though selling Complainant's goods, has no permission to use
the trademark as the domain name”); see also Ullfrotte AB v. Bollnas Imp., D2000-1176 (WIPO Oct. 23, 2000)
(finding that although Respondent legitimately sells goods originating from
Complainant, this does
not give him the right to register and the use the mark
as a domain name without the consent of the holder of the trademark).
A
false and completely unsupported claim by a Registrant that it has been granted
permission to use the trademark at issue cannot
be enough to support a claim of
legitimate rights. See Societe Civile
Agricole Chateau Margaux v. Goldman Williams LTD, D2001-1147 (WIPO Dec 3,
2001)(respondent claimed to be a reseller of Complainant's goods, but the
panel, when transferring the domain
name, held that "[r]espondent did not
give a detailed account of its relationship with the Complainant" and
therefore "respondent
cannot oppose the Complainant's request (for
transfer of the domain name) on the ground of a business arrangement or the
fact that
he is selling the Complainant's products."); Johnson and Johnson vs. RX USA,
FA0205000112609 (Nat. Arb. Forum June 13, 2002)(panel found bad faith and
ordered transfer of domain name when Respondent claimed
to be a reseller of
Complainant's products, "yet Respondent came forward with no proof that Complainant
has permitted Respondent
to operate using Complainant's mark . . . and
Respondent avoids Complainant's contention that it has not given Respondent authorization.");
Intuit, Inc., vs. Rocco Mancini
DBIZ2002-00216 (WIPO July 17, 2002) (panel found bad faith and ordered domain
name transfer when respondent claimed to have registered
the disputed domain
name with the intent to resell Complainant's goods, but had taken no steps to
gain the authority to resell the
products.); Hewlett-Packard Co. v. OfficeOnWeb, Ltd., FA 151537 (Nat. Arb. Forum,
May 21, 2003) (respondent's unauthorized use of LASERJET mark to operate as a
reseller of Complainant's
products constituted bad faith use and registration
pursuant to Policy 4(b)(iv)).
In
this case, the Respondent has selected the <authorizenet.net>
domain name for purposes of generating business to his company and diverting
traffic to a commercial website offering identical services
as Complainant by
capitalizing on the public’s familiarity of Complainant’s well-known
AUTHORIZE.NET mark.
. . . Policy ¶4(a)(iii).
Respondents’
selection and registration of <authorizenet.net>,
a misspelling of Complainant’s well-known AUTHORIZE.NET mark and domain names,
was deliberate. Complainant’s AUTHORIZE.NET marks
are well-known world wide.
The Internet addresses of Complainant at <authorize.net>
and <authorizenet.com> are two
of the more widely recognized and heavily used sites on the Internet. The
recognition and reputation of a trademark owner’s
mark can demonstrate a
Respondent’s bad faith intent in registering a domain name. Playboy Enterprises International, Inc. v.
Sookwan Park, WIPO Case No. 2001-0078; Telstra
Corporation Limited v. Nuclear Marshmallows, Case No. D2000-003. In this case,
Respondent has admitted knowledge of Complainant’s well-known AUTHORIZE.NET
Marks by its false
claim that it is a licensed re-seller/distributor of
Complainant’s AUTHORIZE.NET services.
The use of a domain name confusingly similar to a registered
trademark 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). Amazon.com, Inc. v. Applied Business Solutions, WIPO Case No.
D2003-0309 (Jul. 2, 2003) (“[T]here can be no legitimate purpose for the use of
a domain name incorporating an entire
trademark owned by another”) (citing
additional cases). A bare claim by Registrant that it is licensed to re-sell or
distribute the
trademark owner’s services cannot be a bona fide offering of services,
unless such permission is supported by at least some evidence
of contractual
permission. See Intuit, Inc., vs. Rocco
Mancini DBIZ2002-00216 (WIPO July 17, 2002) (Where there was nothing in the
record to indicate that Respondent obtained a license or permission
from
Complainant to use the Complainant Trademark (other than acquiring the disputed
domain name) Respondent failed to meet the requirements
of paragraph 4(c)(ii)).
Respondent
is shown in all records and correspondence as Roger Smith or Xxtreme Consulting,
Inc. There is no indication that Respondent
has ever been known by the
AUTHORIZENET.NET mark or <authorizenet.net>.
Bank of America Corp. v. Out Island
Properties, Inc., NAF Case No. FA0304000154531 (bad faith where no evidence
on record indicating that respondent was commonly known by disputed domain
names); see also Tercent, Inc. v. Lee Yi,
NAF Case No. FA0301000139720 (Feb. 10, 2003) (no evidence respondent was known
by domain name prior to registration); Gallup
Inc. v. Amish Country Store, NAF Case No. FA0012000096209 (Jan. 23, 2001)
(no rights in domain name where respondent not commonly known by domain name
and connected
to inactive website).
In
view of the totality of the circumstances, transfer is warranted based on Respondent’s
bad faith.
Respondent
provided the following in the Response as its contentions:
The
Response specifically responds to the statements and allegations contained in
the Complaint and includes any and all bases for
the Respondent to retain
registration and use of the disputed domain name. ICANN Rule 5(b)(i).
. . . .
. . .
Policy [¶] 4(a)(i).
Complainant's contention that respondent's (Roger H.
Smith/Xxtreme Consulting, Inc.) <authorizenet.net>
is identical or similar to complainant's <authorize.net>
is false. Authorize is a very common (credit card processing) industry
term, and has been widely used since electronic credit card
processing began.
Network, net or any other versions of such are also very common industry terms,
and have also been around since
the beginning of electronic credit card
processing.
Subsequent to receiving this complaint, respondent has found
that virtually any website containing "authorize",
"authorise", "authorized", "authorised", is a
website relating to credit card processing, soliciting potential
merchants. There are perhaps hundreds
of sites that are; as complainant would state, "substantially
identical" or "confusingly
similar" to complainants <authorize.net>. It seems absolutely ludicrous that
complainant has any right to any of these names that were registered, typically
by small businesses
and entrepreneurs who use them as marketing tools.
Complainant's <authorize.net>,
and <authorizenet.com>, is and
electronic gateway, which is a tool to process credit cards on the internet.
Complainant does not directly sell or offer
this gateway "tool" to
clients. Complainant's electronic gateway is bundled with other services and
offered to clients
by authorized resellers and agents.
The credit card processing industry relies primarily on
agents and independent reps to "initiate" merchants (clients) by
various means of prospecting and solicitation. With the onset of the internet,
a new avenue of lead generation and customer contact
was born. In an effort to
develop a lead source, respondent performed many domain name search for various
credit card processing
related terms, on various name-selling sites. Upon
trying numerous entries, respondent accepted the selling sites suggestion based
upon their registration wizard (or similar service from any domain name
registrar). The registration wizard provides name suggestions
that are
available, based upon an original entry.
It was from those suggestions that respondent first purchased domain <authorizenet.net>, November 27,
2001.
Respondent's <authorizenet.net>
was subsequently used to develop a website designed to generate leads for all
types of credit card processing services (retail, mail/phone
order, restaurants,
online).
. . . Policy [¶] 4(a)(ii).
. . . .
Respondent offers all types of payment processing services
to clients for any payment transaction that they may incur, which sometimes
includes the electronic gateway offered by complainant's <authorize.net>
Respondent registered and subsequently developed the website
<authoizenet.net> as a
marketing tool to generate leads related to selling all types of credit card
processing services. Initially as an employee of
an authorized reseller (Sept.
1999-Feb. 2004 E-Commerce Exchange [ECX]), and currently as an independent
agent of two authorized
resellers (iPayment Inc./E Commerce Exchange [ECX] and
Total Merchant Services [TMS].
In
corresponding with the complainant's legal representation (in response to a correspondence
in September), it seemed as if complainant's
legal representation did not understand
the relationship between complainant and authorized resellers.
Based
upon complainant's original request, respondent removed any and all Reference
to <authorize.net> or any
related trademark or registration.
As matter of fact to this arbitration, let it be known that
any contact made to respondent by a client specifically asking for or
requesting Authorize.net, we immediately informed them of the customer service
number for Authorize.net, and or the correct website.
Respondent
does indeed use <authorizenet.net>
to solicit leads to sell credit card and payment processing accounts. If a lead
results in a new merchant, and that merchant requires
online processing, then
the Authorize.net gateway is bundled as part of respondent's service, which
actually directly and specifically
benefits InfoSpace Inc./Authorize.net
(complainant).
Complainant
falsely stated that respondent was NOT a licensed re-seller/distributor, and
respondent has provided no proof whatsoever
(and cannot provide such proof)
that respondent is a licensed re-seller/distributor. In fact, respondent is an
independent agent of two licensed re-seller/distributors' of authorize.net. Respondent
was never requested to provide proof of said relationships, and in fact it is
known by respondent (via forwarded email
correspondence between complainant
and agent development rep. E-Commerce Exchange/iPayment, Inc.) that complainant
was very aware
of the relationship with E-Commerce Exchange/iPayment, Inc.
Respondent would be willing to provide the National Arbitration Forum
review
panel proof of such relationships if requested/required (respondent can provide
agent agreements, W2 from direct employment),
but would rather not share this
information with complainant at this time (due to confidential nature of said
documents) [Bold in
original].
. . . Policy [¶] 4(a)(iii).
. . . .
Respondent's
registration of the domain <authorizenet.net>
was absolutely not in bad faith.
In
an effort to develop a lead source, respondent performed many domain name
search for various credit card processing related terms,
on various
name-selling sites. Upon trying numerous entries, respondent accepted the
selling sites suggestion based upon their registration
wizard (or similar
service from any domain name registrar). The registration wizard provides name
suggestions that are available,
based upon an original entry. It was from those suggestions that
respondent first purchased domain <authorizenet.net>,
November 27, 2001. Complainant's first contact regarding <authorizenet.net> was in Sept '03, several years after respondent
had purchased, developed and marketed said domain. Respondent would contend,
that
complainant (whom has extensive resources [financial and legal]) is using
strong-arm tactics to attempt to obtain something to which
they have no legal
right.
Respondent
has not sought or does not intend to solicit InfoSpace, Inc (complainant) with
the intent to sell or otherwise capitalize
on the registration of <authorizenet.net>, other than
acting as an independent agent of two authorized resellers, which directly
benefits complainant.
In
addition, as already stated, respondent is an authorized independent agent of
two authorized resellers of authorize.net (complainant). In this capacity, respondent actually
provides a service to complainant by reselling (as part of a package) their
electronic gateway,
which complainant does not actually sell themselves.
The
Respondent respectfully requests that the Administrative Panel denies the
remedy requested by the Complainant.
[Citations
to Response exhibits omitted]
Additional Submission by
Complainant
Complainant
provided the following in its Additional Submission:
Complainant,
InfoSpace, Inc., has submitted a supplemental submission in further support of
its Complaint in the above proceedings,
and in reply to the Response of Respondent
Roger H. Smith/Xxtreme Consulting, Inc., in accordance with the following.
Respondent
has presented many unsubstantiated facts and claims in an attempt, perhaps, to
confuse the panelist into believing that
this case is a complex maze of
controverted facts and contract terms. But this case is really quite simple
because Respondent has
made the following admissions:
1) he is aware of the AUTHORIZE.NET
trademark and <www.authorize.net>
and <www.authorizenet.com>
domain names owned by Complainant;
2) he selected the domain name <www.authorizenet.net> to generate
traffic to his website;
3) he gets traffic from people looking for
(and specifically asking for) Complainant's Authorize.Net services;
4) he sometimes offers genuine Authorize.Net
services and sometimes does not;
5) he offers competing credit/transaction
processing services, which benefit from traffic generated by the confusingly
similar domain
name.
In
addition to these admissions, Respondent does not dispute Complainant's
ownership of U.S. Registrations on the Principal Register
(with no disclaimers)
for the marks AUTHORIZE.NET and AUTHORIZE.NET WHERE THE WORLD TRANSACTS.
Complainant
has submitted a declaration of the general manager of the Authorize.Net division,
stating that neither Registrant nor
his business has been granted permission to
re-sell or distribute its Authorize.Net credit card processing services or use
the Authorize.Net
trademarks. See, Exhibit G to Complaint. Respondent offers
not one line of documentation proving that he is an authorized re-seller.
Respondent refers to his Exhibit E as supportive of his claim to be an
authorized re-seller of Complainant's services, but this Exhibit
does not even
mention Respondent. Respondent has not provided any agreement with Complainant
showing he or his company is an authorized
re-seller; indeed he cannot because
there is no such agreement.
Even
if Respondent were an authorized re-seller, the same Declaration sets forth in
detail the salient terms of Complainant's re-seller
Agreements, which ALWAYS
clearly prohibit the use of the AUTHORIZE.NET trademark in any way that might
cause confusion, and clearly
prohibits registration of the AUTHORIZE.NET mark
or any similar mark.
In
summary, there can be no finding of good faith registration of the domain name,
when Respondent knew of Complainant's well-known
mark, registered a domain name
incorporating Complainant's mark (which he selected precisely because it
incorporated Complainant's
mark), and intended to gather traffic from those
interested in Complainant's services. There is a legal presumption of bad
faith
when Respondent reasonably should have been aware of Complainant's
trademarks. See, Pearl Jam, A General Partnership
v. Peter Lyn c/o JamPearl Ltd, NAF Case No. 221238 (Feb. 16 2004), citing, Digi Int'l v. DDA Sys., FA 124506 (NAF
Oct. 24, 2002).
Respondent
also argues that the word "authorize" is used often in connection
with Internet credit card processing services.
But Respondent has not used the
word "authorize," rather, Respondent has wholly incorporated
Complainant's registered trademark
"AUTHORIZE.NET" and has merely
added another "NET", admittedly to generate traffic to his website
selling competing
services.
Based
on the above and the Complaint previously submitted in this matter, Complainant
respectfully requests that the subject domain
name be transferred to the
Complainant.
[Citations
to Complainant exhibits omitted]
Additional Submission by
Respondent
Respondent,
Roger H. Smith, provided the following in its Additional Submission:
Response to statements made
by Complainant
Complainant’s contention that Respondent has presented any
unsubstantiated facts and claims is false. Respondent has directly and
specifically replied to each allegation made by Complainant with supporting
evidence in an explanatory manner. Respondent’s original
submission was in no
way intended to confuse the panelist, but rather to provide relevant
information regarding the facts of this
arbitration. In addition, Complainant’s
contention that Respondent has made admissions is misleading.
1) Respondent became aware of AUTHORIZE.NET
trademarks only after receipt of Complainant’s correspondence dated September
9, 2003 (Complainant
Appendix C). Upon receipt of said correspondence, we
immediately removed any and all markings in question, and sent a reply to
Complainant.
2) Respondent selected the domain name <www.authorizenet.net> only after
it was suggested by the search function that we registered through. Respondent
initially entered <www.authorize.com>,
which was already taken. The domain registrars search listed many other possibilities
one of which was <www.authorizenet.net>,
which Respondent subsequently registered.
3) It is VERY INFREQUENT that
Respondent gets any traffic from individuals looking for Authorize.net.
Respondent has previously stated and maintains that,
if it is determined that
traffic that specifically requests <authorize.net>,
or is an existing customer needing customer service, we immediately refer them
to the correct website, or provide them with the
Authorize.net customer service
number. In addition, Complainant’s services are only a portion of the entire
package that merchants
require to process credit cards.
4) Complainant’s statement is absolutely
false. Complainant benefits from us selling their gateway. Respondent has
several websites,
which generate traffic in addition to
<Authorizenet.net>, and if a merchant requires a gateway, we sell
Complainant’s product.
However, many merchants that contact us through the site
are actually retail merchants that do not require gateway services (those
provided by Complainant).
5) Complainant alleges that we offer
competing services. Again this is a false statement. This statement is false
because complainant
offers through re-sellers and agents only a gateway product
(a portion of the service that is required by a merchant to process credit
card
transactions). Respondent sells merchant accounts (which includes all of the
services and products necessary for a merchant
to process credit card transactions).
The only companies we (Respondent) are in direct competition with are other
re-sellers and
agents that sell the same products we do. Once again, this has
nothing to do with the domain name. Merchants do searches all the
time on the
net, and keep punching in domain names to see what different companies have to
offer. Again AUTHORIZE is a VERY common term in the credit card
processing and equipment industry.
Complainant
alleges that Respondent “has not provided any agreement with Complainant
showing he or his company is an authorized re-seller”,
and further states that
Respondent “indeed cannot because there is no such agreement.” Complainant is
correct as stated in our original
response; Respondent does NOT have a direct
re-seller agreement through Complainant. Respondent has in fact provided the
company
names with which Respondent, Xxtreme Consulting, Inc does
have independent contracts to re-sell merchant accounts with hardware and
software, including gateways (product of Complainant).
Those two companies are
E-Commerce Exchange/iPayment, Inc and Total Merchant Services. Both companies
are registered resellers of
Complainant. Complainant has never requested from
Respondent proof or evidence of agent agreements from these two companies.
Respondent has provided listings of re-sellers of
which we are agents (Respondent
Appendix E), and we have stated that we would provide; upon request, to
the forum our agent agreements with those re-sellers. Complainant
(Authorize.net) does not provide credit card processing services, but rather
only provides (through re-sellers or agents) a portion (electronic gateway) of
what a merchant needs to process credit cards on line.
Merchants
require numerous other services in order to accept credit cards, which are ALL provided
by Respondent.
Respondent
has removed any and all marks that indicate Authorize.net or any related
trademarks. Respondent’s <www.authorizenet.net>
website does not contain any confusing items. In addition, there are myriad
other websites (none owned by Respondent) with authorize names, many of
which DO contain Authorize.net trademarks.
Complainant
argues that they have rights to much of the intellectual property surrounding
the term AUTHORIZE, when in fact they do not. In fact there is an
existing site www.authorize.com, which has no relation to Complainant.
As stated before, authorize, and network and any and all forms,
abbreviations etc… are very common credit card processing industry terms, which
have been in use long before
Complainant was even in existence.
Respondent
did not select disputed domain simply because it incorporated Complainant’s
mark. Respondent has been in possession of
www.authorizenet.net
for many, many years. During that time, Respondent has never tried to
capitalize on the ownership of that name in any other way than
to offer
merchants credit card processing services. If the merchant required online
credit card processing services, we would bundle
Authorize.net services with
our other services, which happens to directly benefit Complainant. If Complainant
was indeed concerned
about this domain name, then they should have registered
it long before Respondent, in addition, they should have registered any
and all
domain names that they deem confusing or similar to their own designations, of
which there are many.
In
summary, bad faith simply does not exist on the side of the Respondent, but
rather it seems the Complainant is using deep financial,
legal and technical
resources in efforts to obtain something that they simply do not have rights
to. This is simply a case of property.
Respondent is in legal ownership of
property that Complainant has subsequently decided is of value to them, yet is
absolutely not
entitled. Respondent respectfully requests that this matter be
dismissed; and that any further claims by Complainant against Respondent
be
disallowed, based upon the facts in evidence.
[Citations
to Response exhibits omitted]
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.”
The
Panel will therefore issue its decision based on the Complaint, the Response
and the Additional Submissions filed by the Complainant
and the Respondent.
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
Complainant has shown that it is the proprietor of several United States
trademark registrations regarding the trademark AUTHORIZE.NET,
of which Reg. No.
2,422,317 AUTHORIZE.NET and Reg. No. 2, 441,859 AUTHORIZE.NET WHERE THE WORLD
DOES BUSINESS ON THE WEB (& design)
were registered before the registration
of the disputed domain name <authorizenet.net> on November 27,
2001. The Panel concludes that the disputed domain name is confusingly similar
to the Complainant’s AUTHORIZE.NET
marks. The Panel finds that the deletion of
the punctuation mark between “authorize” and “net” and the addition of the word
“net”
to the domain name in question is not sufficient in order to distinguish
it from the AUTHORIZE.NET trademark of the Complainant.
Furthermore, as has
been concluded in previous panel decisions, the mere transposition of terms and
the addition of a top-level domain,
such as “.com” or “.net”, does not avoid a
finding of confusing similarity. See, e.g., InfoSpace, Inc. v. Vortex Networks, FA 223035 (Nat. Arb. Forum,
Feb. 24, 2004).
The
Respondent has argued that the words “authorize” and “network”, “net” or any
other versions of such are common industry terms,
and that there are many web
sites containing the words "authorize", "authorise",
"authorized" or "authorised",
which relate to credit card processing. According to the Respondent the
Complainant cannot therefore have any rights to these words.
The Complainant’s
word mark AUTHORIZE.NET was first registered on the Supplemental Trademarks
Register. This fact indicates that
the trademark was initially found to be
lacking sufficient distinctiveness for registration. However, according to the
American Trademarks
Act a person who obtains a registration on the Supplemental
Register may later seek registration on the Principal Register based
on a claim
of acquired distinctiveness. In this case, the Complainant subsequently obtained
a registration also on the Principal
Register for the word mark AUTHORIZE. NET,
which shows that the trademark at that point had acquired sufficient
distinctiveness for
registration. This means that the Complainant is the first
to prove ownership of a proprietary trademark right in the AUTHORIZE.NET
mark.
Furthermore, according to the Complainant’s trademark Registrations Numbers
2,422,317 AUTHORIZE.NET, 2,749, 994 AUTHORIZE.NET
and 2,441,859 AUTHORIZE.NET
WHERE THE WORLD DOES BUSINESS ON THE WEB (& design) in both the Supplemental
and Principal Register
evidence of first use and in commerce has been filed
with the United States Patent and Trademark Office as from 1996, which
constitutes
evidence of use prior to the date of registration of the
Respondent’s domain name in 2001. The Respondent has not proven that he
is a
proprietor of any prior right in the AUTHORIZE.NET trademark.
Furthermore,
as pointed out by the Complainant, the Respondent has not only registered the
word “authorize” but rather the entire
Complainant’s trademark ATHORIZE.NET
with the addition of the top-level domain “.net”. This fact strengthens the
Panel’s opinion
that the disputed domain name is confusingly similar to the
trademark in which the Complainant has rights in accordance with Policy
¶
4(a)(i).
According to the Complainant the
Respondent has never been granted permission to operate under the <authorizenet.net>
domain name and has no trademark or service mark rights in the terms. The
Complainant has not permitted the Respondent to use or
license the
AUTHORIZE.NET mark or any variations thereof. The Respondent himself has not
provided any agreement with Complainant
showing that he or his company is an
authorized re-seller of the Complainant’s services. The Respondent has admitted
that he does
not have a direct re-seller agreement through Complainant, but
refers to Appendix E to the Response as support of the claim that
he is an
independent agent of two licensed re-seller/distributors of the Complainant.
However, this Appendix does not mention the
Respondent. Thus, the Panel finds
that the Respondent has not shown that he or his company is an authorized
re-seller or an independent
agent of licensed re-seller/distributors of the
Complainant.
Furthermore, it has not been shown that the Respondent has
been commonly known by the domain name in question. The Complainant, on
the
other hand, has shown that it is the owner of the prior trademark rights in the
AUTHORIZE.NET mark through acquired distinctiveness.
As mentioned above, the
Complainant has also shown that regarding its trademark Registrations Numbers
2,422,317 AUTHORIZE.NET, 2,749,
994 AUTHORIZE. NET and 2,441,859 AUTHORIZE.NET
WHERE THE WORLD DOES BUSINESS ON THE WEB (& design) evidence of first use
and
in commerce has been filed with the United States Patent and Trademark
Office as from 1996, which constitutes evidence of use prior
to the date of
registration of the Respondent’s domain name.
According to his own allegations, the
Respondent initially worked as an employee of an authorized re-seller
(September 1999-February
2004) of the Complainant and is currently operating as
an independent agent of two authorized re-sellers. Thus, the Panel concludes
that the Respondent must have been aware of the Complainant’s trademark and
services. Since the Respondent’s services are identical
or at least similar to
the services of the Complainant the Panel finds that the Respondent is not
making a noncommercial or fair
use of the domain name, without intent for
commercial gain to misleadingly divert consumers. See, e.g., Amazon.com, Inc. v. Applied Bus. Solutions,
D2003-0309 (WIPO July 2, 2003), to which the Complainant refers and in which it
was stated that “there can be no legitimate purpose
for the use of a domain
name incorporating an entire trademark owned by another.”
In view of the above the Panel finds that
the Respondent has no rights or legitimate interests in respect of the disputed
domain name.
Consequently, the prerequisite under Policy ¶ 4(ii) has been met.
As has been concluded above the
Respondent is not a licensed re-seller/distributor of the Complainant. Nor has
the Respondent shown
that he is an independent agent of licensed
re-seller/distributors of the Complainant. Furthermore, the Complainant has
shown that
even if the Respondent were a licensed re-seller/distributor, which
Complainant denies, Complainant’s re-seller/distributor contracts
for the
AUTHORIZE.NET services contain terms that prohibit use of the AUTHORIZE.NET
trademarks in any way that alters or dilutes
the marks, including use or
registration in a domain name. It has been held in previous panel decisions
that a Respondent cannot
use the Complainant’s trademark in a domain name
without the consent of the Complainant, even if the Respondent is a licensed
re-sellers
of the Complainant’s goods. See, e.g., Toyota Jidosha Kabushiki Kaisha v. Aebersold, FA 113316 (Nat. Arb.
Forum July 10, 2002); Ullfrotte AB v.
Bollnas Imp., D2000-1176 (WIPO Oct. 23, 2000).
In view of the similarities between the
domain name and services of the Respondent and the Complainant’s trademark and
services and
the fact that the Respondent must have been aware of the
Complainant’s trademark the Panel concludes that the Respondent has registered
and used the disputed domain name in order to attract, for commercial gain,
Internet users to its web site by creating a likelihood
of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of its web site.
In view of the above the Panel finds that the disputed
domain name has been registered and is being used in bad faith in accordance
with Policy ¶ 4(a)(iii).
Consequently, all the prerequisites for
cancellation or transfer of the domain name according to Paragraph Policy ¶
4(i) have been
met.
The Complainant has requested transfer of
the domain name.
DECISION AND FINDINGS
Having
established all three elements required under the ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <authorizenet.net> domain name be
TRANSFERRED from Respondent to
Complainant.
Jonas Gulliksson, Panelist
Dated: May 21, 2004
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