Peter Geraci v.
Claim Number: FA0808001221830
Complainant is Peter Geraci (“Complainant”), represented by Brian
A.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <infotape.com>, registered with Network Solutions, 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 August 22, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 25, 2008.
On August 25, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <infotape.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 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 postmaster@infotape.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 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 a licensed attorney that operates a law firm and offers legal information under his INFOTAPES mark.
Complainant has provided free legal information under his INFOTAPES mark, focusing on bankruptcy and consumer credit issues for Internet users, at his <infotapes.com> domain name since at least December 6, 1998.
Complainant also advertises his legal firm at this domain name.
Complainant additionally engages in television advertising under his INFOTAPES mark and operates a telephone number that offers free bankruptcy instructional guides under his INFOTAPES mark.
Complainant registered his INFOTAPES mark with the State of
Complainant filed an application for the registration of the INFOTAPES mark with the United States Patent and Trademark Office under date of February 28, 2007.
Respondent acquired the disputed domain name on February 19, 2008.
The disputed domain name currently resolves to a website that displays links to third-party bankruptcy and credit legal services which compete with Complainant’s business.
Respondent is not commonly known by the disputed domain name.
Complainant has not authorized Respondent to use its INFOTAPES mark.
Respondent’s <infotape.com> domain name is confusingly similar to Complainant’s INFOTAPES mark.
Respondent does not have any rights to or legitimate interests in the <infotape.com> domain name.
Respondent registered and uses the <infotape.com> 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 or 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 applied for, but not yet obtained, a federal registration for the INFOTAPES mark. However, registration of a mark is not necessary for purposes of a Policy ¶ 4(a)(i) analysis, so long as Complainant can establish common law rights in his mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's trademark or service mark be registered by a government authority for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001):
The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.
Complainant has provided evidence that he used his INFOTAPES
mark to provide legal information to Internet users since at least 1998 on a
website resolving from his <infotapes.com> domain name. Complainant has
also provided proof that he has used his INFOTAPES mark in connection with
television advertisements and a telephone number which consumers can call to
receive legal information. None of this
evidence is controverted by Respondent.
Accordingly, Complainant has provided sufficient evidence of its use of
his INFOTAPES mark to confer upon him common law rights in the mark pursuant to
Policy ¶ 4(a)(i). See Keppel TatLee Bank v.
In addition, Complainant has provided evidence of
registration of the INFOTAPES mark with the pertinent authorities of the State
of
Respondent’s domain name incorporates Complainant’s INFOTAPES service mark in its entirety, save for the deletion of an “s,” and the addition of the generic top-level domain “.com.” These alterations do not detract from the confusing similarity between the domain name and the mark. We therefore conclude that the disputed domain name is confusingly similar to the competing mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus left the disputed domain name confusingly similar to it); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t
is a well established principle that generic top-level domains are irrelevant
when conducting a Policy ¶ 4(a)(i) analysis.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not possess rights to or legitimate interests in the disputed domain name. Complainant must present a prima facie case in support of these allegations before the burden shifts to Respondent to prove otherwise. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”
Complainant has presented a prima facie case in support of its allegations, and Respondent has failed to respond to these proceedings. Therefore, we may conclude that Respondent does not possess rights to or legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004):
Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to accept
all reasonable allegations set forth…as true.
We will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name pursuant to the provisions of Policy ¶ 4(c).
We begin by noting that Complainant alleges, and Respondent
does not deny, that Respondent is not commonly known by the disputed domain
name. Consistent with this, the pertinent
WHOIS information lists Respondent as “
Complainant also alleges, without contradiction from Respondent, that Complainant has not authorized Respondent to use its INFOTAPES mark. This is a further indication that Respondent lacks rights or interests in its domain name that are recognizable under the Policy. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark there in question and never applied for a license or permission from a complainant to use a trademarked name).
It is also undisputed on the record before us that Respondent’s domain name resolves to a website that displays links to third-party websites that compete with Complainant’s business. Respondent’s use of the disputed domain name in this way does not constitute 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services); 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 nor a legitimate noncommercial or fair use because that respondent used the names to divert Internet users to a website that offered services competing with those offered by a complainant under its marks).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain name to display links to third-party competitors of Complainant’s business constitutes disruption of Complainant’s business. This is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008):
The disputed domain names resolve to websites that list links to
competitors of Complainant, evidence that Respondent intends to disrupt
Complainant’s business, a further indication of bad faith pursuant to Policy ¶
4(b)(iii).
See also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business).
Because Respondent presumably receives compensation in the form of click-through fees for its use of the disputed domain name as alleged, its use of the disputed domain name demonstrates an attempt to profit from the goodwill Complainant has built in its INFOTAPES mark. Such use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003): “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’” See also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith registration and use of domain names by using domains that were identical or confusingly similar to a complainant’s mark to redirect users to a website that offered services similar to those offered by that complainant).
For these reasons, the Panel 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 <infotape.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 10, 2008
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