Reed Elsevier Inc. and
Seisint, Inc. v.
Claim Number: FA0710001102374
PARTIES
Complainant is Reed Elsevier Inc. and Seisint,
Inc. (“Complainant”), represented by Amy L. Kertgate, of Fulbright &
Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goaccurint.com>, registered with Compana, LLC.
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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 23, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 24, 2007.
On November 14, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <goaccurint.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 November 19, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 10, 2007 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@goaccurint.com by e-mail.
A timely Response was received and determined to be complete on December 10, 2007.
An Additional Submission from Complainant was received on December 13,
2007 and found to be in compliance with Supplemental Rule 7.
An Additional Submission by the Respondent titled “Objection and Reply”
was submitted and was received on December 20, 2007, after the deadline for
submissions. It was determined to be
deficient. The Panel has nevertheless
chosen to consider this Additional Submission in its Decision, for the reasons
given below.
On December 19, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that it owns various trademarks for the string
ACCURINT since 2001. It uses that
trademark, and the domain name <accurint.com>, to offer fraud detection
and identity solutions for the public and private sector, including the
provision of credit history information on individuals and companies.
According to the Complainant, its extensive marketing of the ACCURINT
mark has resulted in the mark, and the associated domain name, becoming well
recognized by consumers.
The Respondent registered the disputed domain name in 2005, four years after the Complainant began using its mark.
The Complainant alleges that ACCURINT is an arbitrary term which has no
meaning apart from its use as a trademark by the Complainant. The Respondent is not licensed or otherwise
authorized to use the mark.
According to the Complainant, the Respondent is not commonly known as
“goaccurint.com” and, therefore, has not established rights or legitimate
interests in the disputed domain name.
Further, says the Complainant, the disputed domain name is confusingly
similar to its mark ACCURINT, because addition of the common word “go” does not
differentiate the domain name from the mark.
The Complainant alleges that the Respondent is a known cybersquatter
against whom over 40 actions have been brought and won
under the Policy.
The disputed domain name points to a general directory portal page
which contains a “Related Searches” field, pointing to areas such as “Go,”
“Directory,” “People Search,” “Music download,” etc. Further, the site contains pop-up
advertisements.
Thus, says the Complainant, the disputed domain name is being used by
the Respondent in connection with a revenue-generating scheme: the Respondent
receives some compensation for revenues generated by searches, pop-ups, etc.,
activated through use of the disputed domain name.
According to the Complainant, this constitutes bad faith registration and use under Policy ¶ 4(b)(iv), because the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark.
Further, according to the Complainant, bad faith is shown because the Respondent must have been aware of the Complainant’s mark when it registered the disputed domain name, since it consists of a common work (“go”) prefixed to the Complainant’s mark, which mark is an arbitrary string of letters not used for any other purpose.
Based on representations made by the Respondent in prior proceedings under the Policy with respect to its willingness to cooperate with trademark owners, on October 12, 2007 the Complainant sent a cease and desist letter to the Respondent, requesting transfer of the disputed domain name to the Complainant.
After expiration of the response period provided by the Complainant, the Respondent replied on October 18, 2007 that it would take an additional 15-21 days for Respondent’s legal representative to get in touch with the Complainant regarding the matter.
The Complainant responded on October 19, 2007 that it would hold off initiating action under the Policy provided that the Respondent agree, in the interim, not to transfer the disputed domain name to a third party.
The Complainant subsequently
received what it determined to be an unclear answer to this request. Accordingly, in order to protect its
position, and in light of the Respondent’s history of inconsistent activity in
previous cases (see for example Associated Bank Corp. v. Tex. Int’l Prop. Assocs., D2007-0334
(WIPO June 28, 2007), Am. Auto. Ass’n v.
B. Respondent
The Respondent alleges that, had Complainant waited a bit longer it
could have saved the filing fee as well as the cost of the preparation of the
UDRP and achieved the same result.
The Respondent agrees to the relief requested by the Complainant and
will, upon order of the Panel, transfer the disputed domain name. This is not an admission to the three
elements of 4(a) of the policy but rather an offer of “unilateral consent to
transfer” as prior Panels have deemed it.
The Respondent cites Cartoon Network LP, LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006) and requests
that the Panel order the immediate transfer of the disputed domain name.
C. Additional Submissions
Complainant
In its Additional Submission, the Complainant states that it perceives
the Respondent to be a cybersquatter, because of the sheer volume of UDRP
decisions against the Respondent in both the National Arbitration Forum and the
World Intellectual Property Organization, the nature and use of the disputed
domain names in those cases and in the instant case, and the history of the Respondent’s
dealings with other trademark owners as set forth in those decisions. The Complainant cites Countrywide Fin.
Corp. v. Tex. Int’l Prop. Assocs., FA 1075750 (Nat. Arb.
Forum Nov. 2, 2007), which states:
This Respondent has established a pattern of conduct which is
illustrated in fifty-seven domain name dispute cases. In some of these cases Respondent registered
domain names that entirely appropriated another’s trademark. . . . In the
majority of the cases Respondent typosquatted the domain names to be
misspellings of another’s mark. . . . These cases are a few examples contained in
the archives of the National Arbitration Forum. There are eighteen WIPO cases of the same sort.
What seems obvious from all of these
cases is that Respondent is exercising an extensive use [sic] the marks of
others for Respondent’s financial gain. The
Panel will not cite or analyze all of the numerous cases involving this
Respondent. This pattern of conduct
alone shows bad faith registration and use in this case.
The Complainant goes on to explain that it filed the Complaint because
it was not willing to wait 15-21 days for the Respondent to transfer the
disputed domain name because, given the Respondent’s history, there is was no
guarantee that, following the requested 15-21 day time period, the Complainant
would have received any sort of reply from the Respondent, much less an
agreement to transfer the disputed domain name.
The Complainant cites Danware Data A/S v. Tex. Int’l Prop. Assocs.,
D2007-0945 (WIPO Oct. 10, 2007) and Associated Bank Corp. v.
According to the Complainant, the filing of a stipulation of transfer
does not preclude the Panel from ruling on the merits of the case. Indeed, such a notion is belied by the
explicit requirements of the Policy and by the express language of Rules 10 and
15 of the Rules.
Further, says the Complainant, the language of ¶ 4(a) of the Policy makes
a Panel’s consideration of the required factors a prerequisite to an order
transferring the disputed domain name.
According to the Complainant, when a respondent does not dispute the
allegations contained in the complaint, but, instead, acknowledges its consent
to the transfer of the disputed domain name, numerous panels have consistently
held that the requirements of Policy ¶ 4(a) are simply satisfied. Such panels have issued findings of fact to
that effect— namely that all three requirements of Policy ¶ 4(a) have been
fulfilled—and have ordered the transfer of the disputed domain name to the
complainant on this basis. The
Complainant cites numerous cases to that effect.
Further, says the Complainant, other panels have gone further to
consider the merits of, and issue comprehensive findings of fact with regard to,
the substantive allegations in the complaint as a prerequisite to the issuance
of an order transferring the disputed domain name. This is true even under circumstances such as
those existing here, where a respondent consents to the transfer of the disputed
domain name rather than dispute the substantive allegations in the complaint. The Complainant cites numerous cases to that
effect.
The Complainant states that, for an administrative proceeding to be
“conducted under this Policy” as required under Policy ¶ 3(c), the proceeding
must be one that complies with Policy ¶ 4(a), which states, in pertinent part,
“[i]n an administrative proceeding, the complainant must prove that each of
these three elements are present.” Thus,
pursuant to the above language, transfer of a domain name registration under Policy
¶ 3(c) requires a panel to undertake the usual UDRP analysis of the requisite
elements of Policy ¶ 4(a). The
Complainant cites numerous cases to that effect.
The Complainant notes that Rules 10(a) and 15(a) give the Panel wide
latitude not only in conducting the arbitration, but in determining its
outcome. It cites Reed Elsevier Inc.
& Reed Elsevier Props. Inc. v. Montanya 1Ltd, FA 874482 (Nat. Arb. Forum Feb. 16,
2007), in which the panel proceeded to comprehensive findings of fact with
regard to each element of complainant’s claim, and this despite the fact that
the respondent had requested that the subject domain name, <matindale-hubbell.com>,
be transferred to the complainant without further findings of fact or liability.
To summarize its arguments, the Complainant states:
Merely ordering the transfer of the disputed domain name without the
issuance of findings of fact or liability would work substantial injustice on
Complainants. As recognized by the Panel
in the Montanya case, and as equally true under the circumstances at
issue here, Complainants have been put to considerable expense and likely have
suffered damage to their well-established trademark rights and brand as a
result of Respondent’s cybersquatting. To
allow Respondent to avoid the consequences associated with its unabashed
infringement of Complainants’ trademark rights simply by consenting to the
transfer of the disputed domain name, particularly when the allegations
contained in the complaint are undisputed, discounts the Complainants’ rights
as trademark owner and is inconsistent with the intended purpose of the Policy.
Indeed, a panel’s transfer of a disputed
domain name to the complainant without a ruling on the merits or a finding of
liability presents a loophole through which respondents can circumvent the UDRP
process and continue their infringing practices largely without consequence or
penalty. Such a practice simply cannot
be reconciled with the letter and spirit of the Policy and should not be
employed here.
Complainant goes on to allege that the Respondent does not dispute the
Complainant’s allegations and that its willingness to transfer the domain name
to the Complainant not only is evidence that it has no rights or legitimate
interest in the disputed domain name, but also satisfies the bad faith
requirements set forth in Policy ¶ 4(b).
Accordingly, concludes the Complainant, and notwithstanding
Respondent’s stipulation of transfer, the Complainant is entitled to a decision
on the merits of its claim.
Respondent
In its Additional Submission, the Respondent first challenges the
admissibility of the Complainant’s Additional Submission, arguing that the
Forum’s Supplemental Rule 7 is inconsistent with the Policy and thus violates
Paragraph 1 of the Rules. The Respondent
notes that, under paragraph 12 of the Rules, “the Panel may request, in its
sole discretion, further statements or documents from either of the Parties.” But, says the Respondent, such is not the
case here, since the Panel did not request the Additional Submission. According to the Respondent, the Forum has
exceeded its authority by implementing Supplemental Rule 7.
Further, says the Respondent, by allowing such unsolicited material,
the Forum allows the Complainant to thwart the very streamlined procedure of
“one shot each” envisioned by the Policy.
With respect to the substance of the Complainant’s Additional
Submission, the Respondent states:
Complainant in this proceeding is much like the child at a birthday
party who has been given cake and vanilla ice cream and looks up and says,
“What, no chocolate?” Having received
the Respondent’s consent to transfer, Complainant has decided to spend an additional
$400.00 because, apparently, an expeditious order transferring the domain is
not enough.
The argument, it seems, is that rules 10 and 15 of the Rules for Uniform Domain Name Dispute
Resolution Policy (“the Rules”) demand that the Panel proceed with the
traditional analysis. These rules say
nothing of the sort.
Paragraph 10 of the Rules merely describes the general powers of the Panel and is mostly
housekeeping in nature and does not demand any traditional analysis.
Paragraph 15(a) of the Rules instructs the 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.” It is clear that this gives
the Panel broad discretion in deciding a complaint before it. Paragraph 15(e) instructs the Panel to state
whether the dispute is within the scope of paragraph 4(a) of Uniform Domain
Name Dispute Resolution Policy (“the Policy”).
This only reinforces the discretion given by the Rules to the Panel in
reaching a decision.
The Respondent concludes by citing the recent case OraSure Techs., Inc. v. Tex. Int’l Prop. Assocs., FA 1103646 (Nat. Arb. Forum, Dec.
17, 2007), in which the Panel did not proceed to an analysis of all three
elements of the Policy, because the Respondent agreed to the transfer requested
by the Complainant.
FINDINGS
The Panel will not make any findings of fact, for the reasons explained below.
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.”
Before discussing the substance of the case, the Panel must rule on the
admissibility of the Complainant’s Additional Submission, which has been
challenged by the Respondent, and on the admissibility of the Respondent’s
tardy Additional Submission.
Admissibility of the Complainant’s Additional Submission
The Respondent argues that the Forum has exceeded its authority by
issuing Supplemental Rule 7, which the Respondent believes to be inconsistent
with the Policy and the Rules.
But the Forum has been approved as a Provider under the Policy by
ICANN, who was aware of the Supplemental Rules when it approved the Forum, see letter e at http://www.icann.org/dndr/udrp/provider-approval-process.htm.
Since ICANN has written and approved both the Policy and the Rules, it must
be presumed that ICANN would have requested, during the provider approval process,
that the Forum delete or modify Supplemental Rule 7 if that rule were
inconsistent with the Policy or the Rules.
That is, the very approval by ICANN of the Forum as a Provider indicates
that Supplemental Rule 7 is consistent with the Policy and the Rules.
The Respondent does not dispute that the Panel has the discretion to
admit further statements or documents from the parties. Such authority clearly suffices to empower
the Panel to accept material submitted pursuant to Supplemental Rule 7. By accepting nomination by the Forum, the
Panel accepts the Forum’s Supplemental Rules, and thus accepts that it has the
task of deciding whether or not to accept, pursuant to paragraph 12 of the
Rules, any material that may have been submitted under Supplemental Rule 7.
The Respondent argues that Supplemental Rule 7 thwarts the streamlined nature
of the procedure envisioned by the Policy.
The Panel disagrees. On the
contrary, Additional Submissions, provided that they do not extend the
deadlines for the decision, can help the Panel to reach a decision quickly and
without having to request additional documentation or clarification from the
parties. Such is the case here.
Thus, the Panel admits the Complainant’s Additional Submission.
Admissibility of the Respondent’s Additional Submission
The Respondent’s Additional Submission was submitted late, but before
the Panel reached its decision.
The Panel may still consider the late submission in addition to materials timely received but has no obligation to consider it in light of its deficient nature. See Bd. of Governors of the 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); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Feb. 28, 2007) (deciding to consider the respondent’s response even though it was deficient because it provided useful information to the panel in making its decision).
As in the case cited above, the Panel chooses to admit the Respondent’s Additional Submission.
Substantive matters
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.
As noted above, 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” (emphasis added).
In this case, the parties have both asked for the domain name to be
transferred to the Complainant. This
Panel holds that in this UDRP proceeding, in accordance with a general legal
principle governing arbitrations as well as national court proceedings, that it
would not be appropriate for it to act nec
ultra petita nec infra petita, that is, that it should not here issue a
decision that would be either less than requested, nor more than requested by
the parties. Since the requests of the
parties in this case are identical, the Panel recognizes the common request,
and finds it unnecessary in the circumstances to make findings of fact or of
compliance (or not) with the three requisite elements of the Policy.
A similar conclusion was reached by the Panel in Boehringer
Ingelheim Int’l GmbH v. Modern Ltd. ‑ Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003);
in Alstyle Apparel/Active Wear v.
Schwab, FA 170616 (Nat.
Arb. Forum Sept. 5, 2003); and in United
Pet Group, Inc. v.
The Panel notes the many cases cited by the Complainant in which Panels
have proceeded to make findings with respect to all three elements of the
Policy even when the Respondent has agreed to a transfer. This Panel does not dispute that panels are
free to do so, but it holds that it is not necessary to do so in the present
case.
The Panel notes that the Complainant argues strongly that “merely
ordering the transfer of the disputed domain name without the issuance of findings
of fact or liability would work substantial injustice on Complainants” and that
to do so would be “inconsistent with the intended purpose of the Policy.”
The Panel disagrees that a mere order to transfer the disputed domain
name would be inconsistent with the intended purpose of the Policy.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://www.wipo.int/amc/en/processes/process1/report/index.html). This report states:
131. … Existing mechanisms for resolving conflicts between trademark owners and domain name holders are often viewed as expensive, cumbersome and ineffective. …
133. … considerable support has been expressed for the development of
expeditious and inexpensive dispute‑resolution procedures …
150. (i) The procedure should permit the parties to resolve a dispute expeditiously and at a low cost.
150 (iv) In order to ensure the speedy resolution of disputes, the remedies available in the procedure should be restricted to the status of the domain name registration itself and should not, thus, include monetary damages or rulings concerning the validity of trademarks.
153. The procedure … would be conducted in accordance with procedural rules laws which take account of the various legal procedural traditions around the world.
182. It has been apparent throughout the WIPO Process that there is a general desire to have a simple and efficient procedure.
183. … the remedies that could be awarded by the neutral decision‑maker be limited to the status of the domain name registration itself and actions in respect of that registration. In other words, monetary damages to compensate for any loss or injury incurred by the owner of an intellectual property as a result of a domain name registration should not be available under the procedure. Such a restrictive approach to remedies would underline the nature of the procedure as an administrative one, directed at the efficient administration of the DNS, which is intended to be complementary to other existing mechanisms, whether arbitration or court procedures.
184. An approach in which remedies were limited to that status of the domain name registration would mean that the remedies available under the procedure would be the cancellation of the domain name registration and its transfer to the third party complainant. Broad support was expressed in favor of these remedies in the comments received by WIPO.
200. Commentators universally viewed it as important that the administrative procedure be capable of providing determinations with speed and efficiency. …
201. It is imperative, therefore, that the procedural rules for the administrative procedure be designed so as to ensure that decisions are taken in a timely manner. …
That is, the purpose of the Policy is to allow the parties to resolve a
dispute related to a domain name quickly and inexpensively. The relief under the Policy is limited to
transfer of the disputed domain name.
The Policy is not intended to duplicate existing national procedures.
If the Complainant wishes to obtain either an award for damages, or a
declaratory judgment for liability concerning the Respondent’s actions, then it
is free to file an appropriate action in an appropriate national court. Indeed, the Complainant is well aware of the
possibilities open to it in this respect, since, in its letter of October 12,
2007 to the Respondent, it states: “In addition to the various remedies under
federal trademark infringement and unfair competition law available to Reed
Elsevier in this matter, the Anticybersquatting Act gives the owners of well
known and distinctive marks a remedy against a third-party’s registration and
use of a domain name that is likely to be confused with the mark owner’s
distinctive brand. This Act not only
provides for the transfer of the domain name registered in violation of the
Act, but also for monetary damages up to $100,000 per domain name violation.”
Such relief is not within the scope of the Policy, whose purpose is merely to determine quickly and inexpensively which of two contending parties is entitled to a particular domain name, without assessing damages or liability. As stated in Paragraph 4(i) of the Policy: “The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant.”
The Complainant states that “a panel’s transfer of a disputed domain
name to the complainant without a ruling on the merits or a finding of
liability presents a loophole through which respondents can circumvent the UDRP
process and continue their infringing practices largely without consequence or penalty.”
The Panel disagrees with this statement. The Complainant has not provided convincing
arguments to show how a ruling on the merits would have any different
consequences or any greater dissuasive effect on cybersquatters than a mere
order to transfer. And, as noted above,
panels operating under the Policy cannot find liability or impose penalties.
The Complainant requests that the Panel proceed to make a determination
on all three elements of the Policy, on the basis of the writings submitted by
the parties.
But, contrary to what the Complainant alleges in its Additional
Submission, the Respondent has not accepted the Complainant’s allegations with
respect to the three elements of the Policy, because the Respondent states:
“This [its Response] is not an admission to the three elements of 4(a) of the
policy.”
It is true that the Respondent does not provide any substantive
refutation of the Complainant’s allegations, but this could be merely because
the Respondent agrees to the transfer and thus does not see any need to provide
substantive replies.
The Respondent has cited case law to the effect that, in such a
situation, Panels do not proceed to an analysis of all three elements of the
Policy. Thus, the Respondent could
reasonably expect that the present Panel would also not proceed to such an
analysis.
If the Panel wished to proceed to such an analysis then, in accordance
with Paragraph 10(b) of the Rules, it might consider it appropriate to notify
the Respondent that it planned to proceed to that analysis and allow the
Respondent an opportunity to submit a substantive response to the Complaint.
This would of course slow down the procedure, which is contrary to the
objective of the Policy and to Paragraph 10(c) of the Rules (“The Panel
shall ensure that the administrative proceeding takes place with due
expedition.”).
Thus, in accordance with Paragraph 10(a) of the Rules, the Panel holds
that the objectives of the Policy are best served by merely ordering the
transfer, as requested by both parties, without further considering the merits
of the case.
For the reasons indicated above, the Panel
need not consider this element of the Policy.
For the reasons indicated above, the Panel
need not consider this element of the Policy.
For the reasons indicated above, the Panel
need not consider this element of the Policy.
DECISION
For the reasons given above, and given the common request of the parties,
in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goaccurint.com> domain name be TRANSFERRED
from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 2, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum