Impact Technologies Group, Inc. v.
Impact.com, Inc.
Claim Number: FA0208000117903
PARTIES
Complainant
is Impact Technologies Group, Inc.,
Charlotte, NC (“Complainant”), represented by Kimberly A. Betz of Parker
Poe Adams & Bernstein, LLP. Respondent
is Impact.com, Inc., Los Angeles, CA
(“Respondent”),[1] represented
by Ari Goldberger of ESQwire.com.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <impact.com>,
registered with NamesDirect.com, Inc.
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.
David
E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 8, 2002; the Forum received a hard copy of the
Complaint on August 19, 2002.
On
August 9, 2002, NamesDirect.com, Inc. confirmed by e-mail to the Forum that the
domain name <impact.com> is
registered with NamesDirect.com, Inc. and that the Respondent is the current
registrant of the name. NamesDirect.com,
Inc. has verified that Respondent is bound by the NamesDirect.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
August 20, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
9, 2002 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@impact.com by e-mail.
A
timely Response was received and determined to be complete on September 9, 2002.
On September 30, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed David E. Sorkin as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to
Complainant. Respondent requests that
the Complaint be dismissed, and that the Panel enter a finding that Complainant
has engaged in reverse domain name hijacking.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
alleges that the disputed domain name is identical or confusingly similar to
various trademarks in which it has rights; that Respondent lacks rights or
legitimate interests in the name because, inter
alia, it has not used the name in connection with a bona fide offering of
goods or services and is not commonly known by the name; and that Respondent
registered and has used the name in bad faith, based primarily upon the manner
in which Respondent replied to an inquiry regarding a possible purchase of the
name.
B.
Respondent
Respondent
contends that it has a legitimate interest in the disputed domain name because
it acquired and intended to use the name for a bona fide offering of goods or
services; because its current use of the name qualifies as a bona fide offering
of goods or services; because it has been commonly known by the name; and
because the name corresponds to a common generic word. Respondent also contends that it has neither
registered nor used the name in bad faith, having acquired the name for reasons
unrelated to Complainant’s trademark rights, and argues that its reply to
Complainant’s inquiry concerning the name is not indicative of bad faith. Finally, Respondent contends that
Complainant has engaged in reverse domain name hijacking by initiating this
proceeding without any plausible basis for establishing bad faith or lack of
legitimate interests.
FINDINGS
The Panel finds that the disputed domain
name is identical to a trademark in which Complainant has rights, and that
Respondent lacks rights or legitimate interests in respect of the disputed
domain name. However, the Panel finds
that the disputed domain name was neither registered nor used in bad
faith. The Panel declines to enter a
finding as to reverse domain name hijacking.
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 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.
Identical or Confusingly Similar
Complainant
is the owner of three trademarks, including a word mark IMPACT that has been
registered on the Principal Register of the U.S. Patent and Trademark Office
since 1994. Disregarding the generic
“.com” suffix, the disputed domain name is identical to this mark.
Rights or Legitimate Interests
Respondent submitted evidence that it
purchased the disputed domain name in 1999 for $50,000, intending to use it for
an online media business, and that it subsequently invested an additional
$20,000 in that venture, together with nonmonetary contributions. However, it appears that Respondent has
since abandoned that venture.[2]
Respondent further contends that its
current use of the domain name—to redirect web browsers to a search engine that
provides links associated with the word “impact”—constitutes a bona fide
offering of goods or services, and that it possesses legitimate interests in
the name on this basis. While it is
true that similar activities may qualify as bona fide offerings, Respondent’s
current use of the domain name does not seem to have anything to do with the
word “impact” apart from automatically generating search engine queries that
include the word. Furthermore, there is
no evidence that the link or redirection to an apparently unrelated site
represents any sort of business venture whatsoever. The record before the Panel is woefully inadequate on this point;
indeed, the primary evidence concerning Respondent’s current or recent use of
the domain name consists of a few printed web pages furnished by Complainant,
and in any event Respondent appears to have since deactivated the links or
redirection to the search engine.
Respondent’s next argument is that it
possesses legitimate interests because it is commonly known by its corporate
name, Impact.com, Inc., which corresponds to the disputed domain name. Respondent has submitted evidence reflecting
its corporate name, but no evidence of any common knowledge thereof.
Finally, Respondent claims it has
legitimate interests in respect of the disputed domain name because the name
corresponds to a common generic word.
This argument appears to be related to Respondent’s claim of legitimate
interests arising from its use of the domain name to redirect browsers to a
search engine, and to that extent it fails for the same reasons. There is no evidence that Respondent is using
the domain name in its generic sense in any other manner, and Respondent does
not appear to be in the business of speculating in generic domain names, which
in appropriate circumstances may support a finding of legitimate
interests.
The Panel concludes that Respondent does
not have rights or legitimate interests in respect of the disputed domain name.
Registration and Use in Bad Faith
The Policy requires proof of bad faith
both in Respondent’s initial registration of the disputed domain name,[3]
and in Respondent’s subsequent use of the name. In this case, the Panel is not persuaded that either of these
events occurred in bad faith.
Complainant points to Respondent’s reply
to Complainant’s inquiry concerning a possible purchase of the domain name as
evidence of bad faith. This
correspondence was initiated by Complainant.
Respondent replied that it had bought the domain name “for alot [sic] of
$”; that its total investment in the domain name was “close to $100,000”; and
that it would sell the name only if it could recoup that investment. While Respondent may have exaggerated the
extent of its investment somewhat, its reply was reasonable under the
circumstances, and the Panel does not consider this correspondence to be
indicative of bad faith. Furthermore,
there is no evidence that Respondent acquired the domain name for reasons
related to Complainant or its trademarks, and Respondent has submitted
persuasive evidence to the contrary.[4]
Reverse Domain Name
Hijacking
Respondent requests that the Panel enter
a finding that Complainant has engaged in reverse domain name hijacking, based
upon Respondent’s claim that the Complaint lacks a plausible basis for
establishing bad faith or lack of legitimate interests. In light of the Panel’s finding that Respondent
does lack rights or legitimate interests in the disputed domain name, the only
viable ground for a finding of reverse domain name hijacking would be that
Complainant should have known, at the time that it filed the Complaint, that it
could not prevail on the issue of bad faith registration and use. Since the Panel’s finding on that issue is
based primarily upon evidence submitted by Respondent and previously
unavailable to Complainant, the Panel declines to enter a finding that
Complainant has engaged in reverse domain name hijacking.
DECISION
The Panel finds that the disputed domain
name was neither registered nor used in bad faith. Complainant’s request for transfer of the disputed domain name <impact.com>
is DENIED.
David E. Sorkin, Panelist
Dated: October 7, 2002
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[1] The original Complaint designated Impact.com, Inc. as Respondent. Brad Billik, the administrative contact for the disputed domain name, was subsequently designated as the Respondent in this proceeding, apparently as a result of an administrative error not attributable to either of the parties. The parties do not appear to dispute that the proper Respondent is Impact.com, Inc.
[2] Respondent contends that its intent at the time of registration to use the domain name for a bona fide purpose is all that is required to prove legitimate interests. The Panel disagrees. Proof of such intent likely precludes a finding of bad faith registration, but it does not demonstrate that Respondent currently possesses any rights or legitimate interests, as required by the Policy.
[3] It appears from the WHOIS database entry for the disputed domain name that the initial registration occurred in 1992, but Respondent states that it acquired the domain name from the previous registrant in 1999. The Panel reads the reference to “registration” in Paragraph 4(a)(iii) of the Policy as referring to the Respondent’s initial registration or acquisition of the domain name. See Ciccone v. Parisi, No. D2002-0847 (WIPO Oct. 12, 2000). The relevant event for purposes of assessing bad faith registration is therefore Respondent’s acquisition of the domain name in 1999.
[4] It does not appear that Respondent’s now-abandoned business venture—an online media business providing information about sports, music, and fashion—would have infringed upon Complainant’s trademarks, all of which relate to the fields of insurance and financial services. Furthermore, Complainant’s claim that it “owns the trademark for ‘impact,’ ” Complaint at 6, is not entirely accurate. It would have been more precise to say that “Complainant is one of numerous entities that hold registered word marks on the Principal Register of the U.S. Patent and Trademark Office comprised solely of the word ‘impact.’ ”