I4 Solutions, Inc. v. Peter Miani
Claim Number: FA0802001153871
Complainant is I4 Solutions, Inc. (“Complainant”), represented by Steven
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <i4.com>, registered with Godaddy.com, Inc.
Each of 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.
Hon. Daniel B. Banks, Jr., (Ret.) as Panelist
Hon. Ralph Yachnin, (Ret.) as Panelist
Roberto A. Bianchi as Chair
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 3, 2008.
On February 28, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <i4.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 2, 2008 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on April 2, 2008.
On April 6, 2008, Complainant submitted an Additional Submission. On April 11, 2008, Respondent submitted Additional Statements and Documents. Both submissions were timely, and made pursuant to The Forum’s Supplemental Rule # 7. The Panel admits and decides to consider both additional submissions in making this decision.
On April 11, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin, (Ret.) and Hon. Daniel B. Banks, Jr., (Ret.) as Panelists, and Roberto A. Bianchi as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. In its Complaint, Complainant contends the following
Solutions is one of the leading web-design companies in the State of
- Respondent is operating the pornographic Website <i4.com> in bad faith for the sole purpose of interfering with Complainant’s business in hopes of embarrassing Complainant and extorting an exorbitant purchase price from Complainant for it. Respondent’s website <i4.com> is confusingly similar to Complainant’s website <i4.net> because only the extension is different, and I4 Solution’s customers often forget the correct extension when attempting to visit <i4.net>.
- Upon information and belief, Respondent Miani is a cyber-pirate who attempts to extort exorbitant purchase prices for various uniform resource locators (URLs or “websites”) on the Internet he knows are confusingly similar to legitimate websites. Respondent maintains these websites for the sole purchase of extorting money from legitimate businesses.
- Never before any notice to the Respondent of the dispute, was Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Complainant is entitled to a presumption that Respondent has no bona fide intent to use the domain under the doctrine of Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000). The Respondent is not commonly known by the Complainant’s well-known I4 mark. The Complainant’s marks have been used for over ten years in connection with the Complainant’s business. Respondent is making an illegitimate commercial use of the domain name, with the intent for commercial gain, and misleadingly diverting consumers to the Website to tarnish the Complainant.
- After contacting Complainant in February of 2007 about selling the URL <i4.com> and having his demand for at least $150,000 denied, Respondent placed pornography on the Website in hopes of embarrassing Complainant into buying the Website, which Respondent knew was confusingly similar to Complainant’s website <i4.net>.
- By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. By his actions, Respondent has unfairly interfered with, and continues to unfairly interfere with, Complainant’s valuable economic relationships with its customers.
B. In his Response, Respondent contends the following:
has not and cannot provide evidence to establish that <i4.com> is
identical or confusingly similar to Complainant’s alleged “i4 SOLUTIONS
SUPPORT” mark. The term “i4” is highly
diluted and used by many different companies. For instance, in
fails to mention that both its registration of <i4.net> and its first use
of its alleged “i4 SOLUTIONS SUPPORT” mark are junior to Respondent’s rights to
is not even the Registrant of <i4.net>; rather the registrant is G. B.
Kip Hansen, of
- Respondent denies all of the allegations made by Complainant with respect to Policy ¶ 4 (a)(ii). Respondent has a legitimate interest in respect of the <i4.com> domain name. At the time Respondent registered the <i4.com> domain name, he had not heard of Complainant. In fact, he did not learn of Complainant until the time Complainant started corresponding with him. Complainant argues that it is well known and has been in business for “over ten years” and that Respondent allegedly registered the <i4.com> domain name to trade off Complainant’s good will. However, Respondent could not have registered the disputed domain name to trade off the good will of the Complainant because the domain name was registered before Complainant ever existed. Indeed, it was registered five (5) years before Complainant incorporated.
- The <i4.com> domain name was not registered in bad faith. The domain name was registered February 1, 1996, two years before the date that Complainant, by its own admissions, first allegedly used its “i4 SOLUTIONS SUPPORT” mark. Furthermore, Complainant did not incorporate until 2001, five years after Respondent’s domain name was registered. Thus, Respondent could not have acted in bad faith, because he did not have knowledge of Complainant. Complainant could not have been famous at the time <i4.com> was registered, i.e., Complainant did not exist.
- Complainant offered to purchase the domain name from Respondent for $ 5,000. Respondent refused because he had a greater interest in maintaining the domain name for his own website development interests.
- Complainant’s allegations that Respondent used pornography to cajole Complainant into purchasing the domain name for a higher price are without merit. Respondent used adult-oriented content and web links to increase traffic for a long time, well before Complainant ever contacted Respondent in February 2007.
- Respondent requests that the Panel denies the remedy of transfer, and makes a finding of reverse domain name hijacking against Complainant.
C. Additional Submissions
In its Additional Submission, Complainant contends as follows.
- The Respondent has endeavored to provide evidence from the U.S. Patent and Trademark Office (USPTO) and the Utah Division of Corporations that the Complainant would not have exclusive, or absolute rights, in the word mark the Respondent asserts is most closely associated with <i4.net> if the Complainant were to attempt registration of that word-mark with the USPTO. Many cases have established this type of argument on the part of respondents is not dispositive or extremely relevant. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate exclusive rights, but only that Complainant has a bona fide basis for making the complaint in the first place); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names and applying the UDRP to unregistered trademarks and service marks). The Respondent has also not contested the Complainant’s assertion that it has been using <i4.net> since at least 2001, and has existed since 1998. This is sufficient to establish rights in the mark <i4.net>.
- Respondent admits that he offers no goods or services at all, let alone any that relate to the i4 mark. The Respondent has merely included links to other pornographic websites. He has argued, in hopes of protecting himself with ¶ 4(c)(i) of the UDRP, that he was preparing to use the disputed domain, but all objective evidence shows that the Respondent’s only interest in the Website was to resale it, despite the Respondent’s ex post facto assertions to the contrary. Furthermore, each of the materials annexed to the Response by the Respondent himself include an advertisement for the sale of the Website in the annexed materials.
Respondent’s additional contentions are as follows:
- Numerous other entities are using “i4,” not just Complainant. There is nothing to suggest that Respondent was “targeting” Complainant when he obtained the domain name. While exclusive rights may not be required for Complainant to maintain standing in this proceeding, when a term is used by numerous entities, that is strong evidence that a mark is weak and that there is no likelihood of confusion.
- In 2006, Respondent took at least two surveys on an online forum to get advice on how to develop a website on his <i4.com> domain name, well before Complainant approached him on February 13, 2007, about Complainant’s interest in acquiring <i4.com>.
- Respondent has clearly shown that he had an independent legitimate interest in developing a health related website using his <i4.com> domain name. Parking <i4.com> in the interim, though, is a valid means of maintaining the domain name while developing his website.
- It was Complainant who approached Respondent to try to buy the domain name, not the other way round. Refusing to sell a domain name in which one has a legitimate right is not
The Panel declines to make findings as to the first and second requisites of the Policy because Complainant failed to establish that Respondent registered the domain name in dispute in bad faith. Since the requisite of use in bad faith is conjunctive with registration in bad faith, the Panel held that Complainant failed to establish the third element of the Policy.
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.
According to the WHOIS information supplied by the registrar to The Forum, the disputed domain name was registered on February 1, 1996. For its part, Complainant states that it is using the expression “i4 SOLUTIONS SUPPORT” as a mark since 1998, that is about two years after Respondent had registered the domain name at issue. Complainant contends that it also has used the <i4.net> domain name. However, it happens that the <i4.net> domain name was registered on June 11, 1996, over four months after Respondent had registered the domain name at issue. This means that Respondent could not have registered the disputed domain name aiming at Complainant, i.e. in bad faith. See PrintForBusiness B.V v. LBS Horticulture, D2001-1182 (WIPO Dec. 21, 2001) (finding the prerequisite of bad faith in Paragraph 4(a)(iii) of the Policy not fulfilled inter alia because “there is no indication or proof that the Complainant had used the mark before the registration of the contested domain name in such a way that the Respondent knew or should have known of any such use.”); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that “it would have been impossible for the Respondent to have been in bad faith vis-à-vis the Complainant when the Respondent registered the disputed domain name since the Complainant did not exist at the time the Respondent registered the disputed domain name.”)
Since Complainant failed to establish registration in bad faith, which must be established in conjunction with use in bad faith, the Panel need not consider the latter, and concludes that the third element of the Policy has not been met.
It is unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as Complainant must succeed under all three portions in order to grant the requested relief. Thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also Vail Corp. & Vail Trademarks, Inc. v. Resort Destination Mktg., FA 1106470 (Nat. Arb. Forum Jan. 8, 2008) (finding it unnecessary to examine all three elements of the Policy once shown the complainant could not satisfy one element).
Since Complainant failed to establish the third element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
After considering the circumstances of this case, the Panel is not satisfied that Complainant acted in bad faith when it decided to bring its complaint.
Roberto A. Bianchi, Chair
Hon. Daniel B. Banks, Jr., (Ret.), Panelist
Hon. Ralph Yachnin, (Ret.), Panelist
Dated: April 24, 2008
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