Intelius Inc. v. Yorkshire Enterprises Limited
Claim Number: FA1007001336980
Complainant is Intelius
Inc. (“Complainant”), represented by Parna
A. Mahrbani, of Lane Powell PC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <intulius.com>, registered with Fabulous.Com Pty Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 22, 2010.
On July 26, 2010, Fabulous.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <intulius.com> domain name is registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.Com Pty Ltd has verified that Respondent is bound by the Fabulous.Com Pty Ltd 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 July 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@intulius.com. Also on July 27, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
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" through submission of a Written Notice, as defined in Rule 1. 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:
1. Respondent’s <intulius.com> domain name is confusingly similar to Complainant’s INTELIUS mark.
2. Respondent does not have any rights or legitimate interests in the <intulius.com> domain name.
3. Respondent registered and used the <intulius.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Intelius Inc., holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the INTELIUS mark (e.g., Reg. No. 3,096, 294 registered on May 23, 2006). Complainant incorporates the INTELIUS mark in its <intelius.com> domain name. Complainant uses the <intelius.com> website to offer services to businesses and individuals who wish to perform employment and tenant screening, background and credit checks, or to search for other publicly available records and data about people, properties, and businesses.
Respondent, Yorkshire Enterprises Limited, registered the <intulius.com> domain name on October 12, 2008. The disputed domain name resolves to a website that features hyperlinks to Complainant’s official website and to third-party websites that provide services and products in competition with Complainant’s services and products.
Complainant
offers evidence that Respondent has a history of registering domain names that
infringe upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants. See Am. Airlines v.
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 the 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark 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 domain name has been registered and is being used in bad faith.
Complainant asserts rights in the INTELIUS mark through its
registration of the mark with the USPTO (e.g.,
Reg. No. 3,096, 294 registered on May 23, 2006). The Panel finds Respondent’s trademark
registrations with the USPTO sufficiently prove Complainant’s rights in the
INTELIUS mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v.
Complainant argues Respondent’s <intulius.com> domain name is confusingly similar to its INTELIUS mark. In Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000), the panel concluded that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks. Likewise, in Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), the panel held the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e.” Furthermore, it is well-established that the addition of a generic top-level domain (“gTLD”) is irrelevant to the Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In this case, Respondent replaces the letter “e” in Complainant’s INTELIUS mark with the letter “u” in the disputed domain name. Respondent also adds the gTLD “.com” to Complainant’s mark. Based on precedent, the Panel finds misspelling Complainant’s mark and then affixing a gTLD to the mark does not distinguish Respondent’s domain name from Complainant’s mark. Therefore, the Panel finds Respondent’s <intulius.com> domain name is confusingly similar to Complainant’s INTELIUS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first demonstrate Respondent does not possess rights and legitimate interests in the <intulius.com> domain name pursuant to Policy ¶ 4(a)(ii). After Complainant establishes this prima facie case, the burden shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). The Panel may find Respondent lacks rights and legitimate interests based on Respondent’s failure to submit a Response. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). Although Respondent did not respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts it has never given Respondent permission to use its INTELIUS mark in a domain name. In addition, the WHOIS information lists “Yorkshire Enterprises Limited” as the registrant of the disputed domain name, which the Panel finds is not similar to the <intulius.com> domain name. Therefore, based on the evidence in the record, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues the <intulius.com> domain name resolves to a website that features hyperlinks to third-party websites that offer services and products in competition with Complainant’s information services and products. In support of this claim, Complainant states that hyperlinks listed include titles such as “People Search,” “Find People,” “Criminal Background Check,” and “Personal Background Check.” Furthermore, Complainant asserts some of the hyperlinks on Respondent’s resolving website connect Internet users to Complainant’s official website. Finally, Complainant contends Respondent uses the disputed domain name in this manner in order to receive click-through fees. The Panel finds Respondent uses a confusingly similar domain name to profit from click-through fees, which does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant also argues Respondent’s disputed domain name
constitutes typosquatting. As previously
discussed, the <intulius.com> domain name replaces the letter “e”
in Complainant’s INTELIUS mark with the letter “u.” The Panel finds that Respondent’s use of a
domain name that incorporates a common misspelling of Complainant’s INTELIUS
mark provides further evidence that Respondent lacks rights and legitimate
interests pursuant to Policy ¶ 4 (a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has been subject to numerous UDRP proceedings,
wherein the disputed domain names were ordered to be transferred from
Respondent to the respective complainants in those cases. See Am. Airlines v.
Additionally, the Panel finds Respondent’s disputed domain name diverts Internet users seeking Complainant’s products and services to its website, which provides links to Complainant’s competitors as well as Complainant’s official website. Therefore, the Panel finds Respondent’s disputed domain name disrupts Complainant’s business and constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant also alleges Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's mark as to the affiliation or endorsement of Respondent’s website. The Panel has already found Respondent’s <intulius.com> domain name is confusingly similar to Complainant’s INTELIUS mark. Moreover, the Panel has concluded Respondent uses its confusingly similar domain name in order to generate click-through fees. Therefore, the Panel finds Respondent’s disputed domain name constitutes registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Lastly, Respondent has engaged in typosquatting through its used of the disputed domain name. Therefore, the Panel finds Respondent’s use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <intulius.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 24, 2010
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