Global IT Profiles, LLC v. IT Sales Leads, LLC
Claim Number: FA0806001198689
Complainant is Global IT Profiles, LLC (“Complainant”), represented by Charles
L. McLawhorn III, of McAfee & Taft A Professional Corporation,
Oklahoma, USA. Respondent is IT Sales
Leads, LLC (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iprofiles.net>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 3, 2008.
On June 3, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <iprofiles.net> domain name is registered with Godaddy.com, Inc. and that 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").
9, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 30, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July b3, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is the leading provider of specialized business intelligence with over thirty employees throughout the world.
Complainant has continuously used the IPROFILE service mark in interstate commerce since April, 1999, in association with its services providing contact, organizational and profile information relating to information technology departments.
Complainant has more than 5,000 users of its services under the IPROFILE mark.
Complainant operates the <iprofile.net> domain name in association with this business.
Complainant applied for registration of its IPROFILE mark with the United States Patent and Trademark Office (“USPTO”) on April 16, 2008 (Ser. No. 77/450,059).
Respondent is not licensed or otherwise authorized to utilize the IPROFILE mark.
On June 27, 2006, Respondent registered the <iprofiles.net> domain name, which resolves to a website displaying a company name of “ITS Profiles” and offers services in direct competition with the business of Complainant.
Respondent’s <iprofiles.net> domain name is confusingly similar to Complainant’s IPROFILE mark.
Respondent does not have any rights to or legitimate interests in the <iprofiles.net> domain name.
Respondent registered and uses the <iprofiles.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has provided evidence of filing for a USPTO
trademark registration for its IPROFILE mark.
However, Complainant has not yet been approved for the registration of
the mark, and its filing for such registration does not predate Respondent’s
registration of the <iprofiles.net>
domain name. In
On this score, Complainant alleges continuous and extensive use of the IPROFILE mark since April 1999. Complainant has identified numerous customers and users of its services that associate Complainant with the IPROFILE mark so that secondary meaning has been established. A panel in BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000), found that a complainant had common law rights in the BROADCASTAMERICA.COM mark, given evidence of extensive use of that mark to identify that complainant as the source of broadcast services over the Internet, plus evidence of wide recognition of the BROADCASTAMERICA.COM mark among Internet users as a source of broadcast services. See also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001): “[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.” Similarly, we conclude that Complainant has established common law rights in its IPROFILE mark.
On the point of confusing similarity, it appears that Respondent’s <iprofiles.net> domain name encompasses Complainant’s IPROFILE mark in its entirety, merely adding the letter “s” and the generic top-level domain (“gTLD”) “.net.” It is well accepted that the addition of a gTLD is ignored for purposes of determining if a disputed domain name is confusingly similar to a competing mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain for purposes of determining whether it is identical or confusingly similar to a competing mark). Moreover, the addition of the letter “s” at the end of Complainant’s IPROFILE mark fails to differentiate the mark sufficiently to avoid a finding of confusing similarity. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that the addition of an ‘s’ to the end of a complainant’s ‘Cream Pie’ mark does not overcome the likelihood of confusion caused by the use of the otherwise identical mark because the domain name <creampies.com> is similar in sound, appearance and connotation.).
Therefore, we find that Respondent’s <iprofiles.net> domain name is confusingly similar to Complainant’s IPROFILE mark under Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant must establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name in order to shift the burden of proof to Respondent. Respondent’s failure to respond creates the presumption that Respondent has no rights to or legitimate interests in the <iprofiles.net> domain name. In G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002), the panel stated that:
[b]ecause Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
To the same effect, see Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001).
Similarly, on the record before us, we are permitted to conclude that Complainant has established a prima facie case and that Respondent has failed to meet that case. We will nonetheless evaluate the available evidence to determine if there is any basis for determining that Respondent has rights to or legitimate interests in the disputed domain name within the parameters of Policy ¶ 4(c).
We begin by noting that Complainant asserts that Respondent is not licensed or otherwise authorized to utilize the IPROFILE mark. Respondent does not deny this allegation. Additionally, the pertinent WHOIS information lends no support to the unstated proposition that Respondent is commonly known by the <iprofiles.net> domain name pursuant to Policy ¶ 4(c)(ii). We therefore conclude that Respondent cannot find shelter under Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that a respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because that respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the mark there in issue); further see Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests in a disputed domain name where a respondent was not commonly known by a competing mark and never applied for a license or permission from a complainant to use a trademarked name).
Likewise, the evidence is uncontroverted that Respondent’s <iprofiles.net> domain name resolves to a website offering services in competition with the business of Complainant. In eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001), a panel stated that a respondent’s use of a complainant’s mark in domain names made it difficult to infer a legitimate use. We infer from this record that Respondent is attempting to benefit commercially from the diversion of Internet users to the website associated with Respondent’s domain name. Such diversion of Internet users seeking Complainant’s services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):
Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
See also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because that respondent used the domain names to divert Internet users to a website that offered services that competed with those offered by a complainant under its marks).
The Panel therefore finds that Complainant has met the requirements of Policy ¶ 4(a)(ii).
We have already established that Respondent registered and
uses the disputed domain name to attempt to gain commercially from
Complainant’s goodwill and investment in the IPROFILE mark by attracting
Internet users searching for Complainant to its own website. A Panel in
The Panel thus finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <iprofiles.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 7, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum