Michael F. Laracy v. John
Baule
Claim Number: FA1007001337113
PARTIES
Complainant is Michael F. Laracy (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rapidinsight.com>, registered with Network
Solutions, LLC.
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 23, 2010.
On July 23, 2010, Network Solutions, LLC confirmed by e-mail to
the National Arbitration Forum that the <rapidinsight.com> domain name is
registered with Network Solutions, LLC
and that the Respondent is the current registrant of the name. Network
Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 28, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of August 17, 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@rapidinsight.com. Also
on July 28, 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.
A timely Response was received and determined to be complete on September 3, 2010.
On August 18, 2010 Respondent requested and was approved for an
extension to respond to the Complaint until September 3, 2010.
Complainant’s Additional Submission was received on September 8, 2010
in compliance with Supplemental Rule 7.
Respondent’s Additional Submission was received on September 13, 2010
in compliance with Supplement Rule 7.
On September 16, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it has registered the mark Rapid Insight®
with the United States Patent and Trademark Office, U.S. Federal Registration
No. 2782031. Complainant filed the registration on December 11, 2002, and it
was officially registered on November 11, 2003.
The trademark is used with computer software for data mining and data
analysis. The software is implemented by businesses, universities, and the
healthcare industry for data reporting and data management.
According to Complainant the domain name in question matches exactly the name of the Complainant’s trademark, causing a likelihood of confusion that the public will believe that the Respondent is affiliated with Complainant based solely on the Respondent’s ownership of the domain.
As of July
21, 2010, the domain at dispute indicates that it is “under construction,” and
this status has been on the web site since it was first registered in May 2000.
As such, it is clear that the Respondent has never used this domain name in
commerce and does not offer any bona fide goods or services on the web
site. Moreover, various links and key
words related to products offered by the Complainant’s trademark, Rapid
Insight®, are posted on the web site despite the fact that, over this 10-year
period, the Respondent has demonstrated no intent to offer products or services
related to data integration, data mining, predictive modeling, or the like.
According
to Complainant the Respondent has no connections, direct or indirect, to the
trademark Rapid Insight® or any affiliation with any other organization or
entity referred to as “Rapid Insight.”
Furthermore, the Respondent is not personally or professionally known as
“Rapid Insight,” and has no legitimate business offering known under the name
“Rapid Insight.”
The
Respondent has allowed multiple key words to be posted on “rapidinsight.com”
that relate directly to the products offered by the Complainant, posing a high
likelihood of misleading consumers from the actual data mining and predictive
modeling software sold under the Complainant’s trademark. Thus, the Respondent’s ownership and use of
the domain name containing the trademark of Rapid Insight® (a) creates a
likelihood of confusion that the public will believe that the Respondent is
affiliated with Rapid Insight®, and (b) causes dilution of Complainant
trademark rights.
The home
page for the domain name “rapidinsight.com” currently displays over 20
instances of key words directly related to the products and services provided
by the Complainant, attracting web traffic that otherwise might go to the
Complainant’s web site. Examples of
these key words include: data integration, business intelligence solution,
reporting software, data analysis, data mining tool, and predictive
modeling. Whether these key words and
descriptions were posted to the web site by the Respondent or the Registrar is
irrelevant; the Respondent is aware that these postings infringe upon the
Complainant’s rights. A cease and desist
order was sent to the Respondent on February 16, 2010, in which the Respondent
was notified of the improper use of descriptions of products and services that
the Complainant offers under its trademark.
Despite this fact, the domain still displays key words that create a
high likelihood of confusion with the actual trademark. The Respondent’s continued hosting of key
words closely associated with the goods and services offered by the Complainant
illustrates that the domain name is being used in bad faith, dilutes of Rapid
Insight’s trademark rights, and causes a high likelihood of confusion that the
public believes the domain “rapidinsight.com” is affiliated with the
Complainant’s trademark.
B. Respondent
In its Response the Respondent stated the following:
Rapidinsight.com as a domain has been owned by the Respondent since May, 2000.
The Respondent has previously
registered Rapid Insight as an LLC and has conducted business under this
trademark with three different clients since 2001. It is the Complainant who
chose to build a Company using a name for which the related .com domain was not
available.
Respondent registered the domain rapidinsight.com with Network Solutions in May, 2000. Since that time, Respondent has continued to pay the fees in order to maintain the registration. Respondent first created and registered the domain name as part of an effort to build a consulting business which would provide strategic financial analytic capabilities. Respondent is a Certified Public Accountant and at the time, was CFO of a technology consulting firm, and so this business concept was well within the area of its expertise. Over the past 10 years Respondent has operated under this name with three clients. Because it can take a significant amount of time to build steady revenues in this type of business, Respondent had had to take pauses in the operation of Rapid Insight in order to hold other more steady jobs. However, Respondent continues to evolve the business plan with an eye towards operating it full-time once Respondent has attained sufficient financial resources.
Prior to receiving any notice of this dispute (August 2010), Respondent has demonstrable preparations to use the domain name in connection with bona fide goods and services. In addition to the business plan presented above, Respondent has provided services under the name on three other occasions and had pursued a partnership relationship with a Company.
In no way Respondent was trying to divert consumers or tarnish the trademark of Rapid Insight, the Complainant company. Until receiving the Complaint, Respondent was not even aware that such a company existed.
In the Complaint, the Complainant notes that the webpage has been under construction for some time. This is true. Given the limited number of clients Respondent has required to this point, Respondent has been able to reach them via word of mouth and has not yet required an awareness creating webpage. However, Respondent’s long-term business plan calls for significant growth in the number of clients which will require a good website.
The Complainant also attaches a screenshot which he claims has many of the key words associated with their business. This requires some explanation. The company with which Respondent registered the domain, Network Solutions, is attempting to expand its business by offering business services to those registering domains with them. Their construction page, over which Respondent has had no control, has key words which happen to link to the Complainant’s website. Respondent, in no way selected this page. When Respondent goes to the website and clicks on the link “Why am I seeing this ‘Under Construction’ page?” It provides the following response:
About This Page
This "Under Construction" page is an automatically generated
placeholder Web page for a domain that is not yet attached to an active Web
site. This page replaces the "Not Found" error pages and notifies
visitors that a Web site is coming soon.
This demonstrates that the page in question was a default page generated by Network Solutions and not a page designed to divert consumers from Rapid Insight, the Respondent’s company. The fact that the default page so closely matches the client’s business is indicative of the generic nature of the services offered by “Business Intelligence” firms.
It should also be noted,
that having received the Complaint, Respondent phoned the CEO of the
complainant company and offered to contact Network Solutions and have them
replace this default page with a blank page which did not contain any key
words. Mr. Laracy declined this offer. Respondent remains willing to do this if
it will satisfy Mr. Laracy’s concerns.
As demonstrated above, Respondent registered this name in anticipation of building a business and has made progress towards building that business. Respondent registered this website in May 2000, and the Respondent, per their website, did not start their business until April 2002.
The Complainant also notes that they sent a cease and desist letter to Respondent in February of 2010. Respondent turned this letter over to its colleague, Mr. Nelson Blitz, who is an attorney, because Respondent did not really understand it. He attempted to contact Mr. Oster, to gain an understanding of the issue, however, his calls were not returned by Mr. Oster. Based upon Respondent’s subsequent conversation with Mr. Laracy, Respondent’s sense is that they were not interested in a response, but were merely attempting to check all boxes so that they could file a complaint and seize Respondent’s website.
As a side note, Respondent finds it strange that Rapid Insight (the complainant) would have started a business in 2002 without first confirming that the .com domain was available. When Respondent created the name rapid insight in May 2000, the first thing that Respondent did was make sure that the .com domain was available. If it had not been, Respondent would have chosen a different name.
Respondent has not solicited any offers to sell this domain name and in fact rejected an offer to sell it in early 2001. Respondent initially purchased and continued to re-register the website for the sole purpose of eventually building its own consulting firm focused on strategic financial analysis.
As demonstrated above, Respondent registered the domain prior to the existence of the Complainant’s company. Respondent has never been in the business of owning or selling websites, and rapidinsight.com is the only domain I own.
Respondent is not a competitor to the Complainant’s company in any specific sense.
In no way Respondent has attempted to attract users to its domain. It remains under construction precisely because Respondent has not seen fit to use it in this manner thus far.
In summary, Respondent
respectfully submits that it acquired this domain in good faith as part of a
sincere effort to build its own business. Over the years, Respondent has
continued to pay the fees to maintain its registration in order to eventually
turn my business into a full-time one. To seize a domain which Respondent
created and registered in 2000, long before the Complainant’s company came into
existence, would be an injustice. Therefore, Respondent respectfully requests
that the rejects the complainant’s remedy.
C. Additional Submissions
In its Additional Submission dated September 8, 2010 Complainant stated
the following:
“I would like to submit the below
written statements, along with the attached exhibit A
as additional information to be considered in this Administrative
Proceeding. After seeing Mr. Baule’s
response, I called the State Corporate Commission for the
A very
important piece of information is that Rapid Insight,
LLC cancelled its registration with the
Mr. Baule
claims to have operated under the name of ‘Rapid Insight’ three times since
2001. The attached exhibit shows that the registration for Rapid Insight, LLC
was cancelled in 2001 and thus Rapid Insight, LLC no longer existed after 2001.
It is unclear what he means by ‘operated under’.
Again,
Rapid Insight, LLC was no longer a company as of 2001. If he is using the
‘Rapid Insight®’ trademark, he is infringing on our trademark. We will look
into this as a separate issue.
In more
than ten years, Respondent has not made any legitimate or fair use of the domain
name. If he truly does intend to utilize
the domain to sell a product or service utilizing the ‘Rapid Insight®’
registered trademark, he will be infringing on our trademark.
I did an extensive trademark search to make sure that the ‘Rapid Insight’ trademark was available. I had begun work on Rapid Insight® Analytics in 1999 and had several users of the product prior to actually incorporating the company. I saw no reason not to keep my product name as ‘Rapid Insight’, and not to use Rapid Insight Inc. as my Company’s name. Again, Mr. Baule’s company named Rapid Insight, LLC, had ceased to exist as of 2001 and there were no companies using the ‘Rapid Insight’ trademark.
I am not so sure that Mr. Baule is being truthful here. When Mr. Baule contacted me in August, he told me that in 2000 he had purchased several websites and that the rapidinsight.com domain is the only one he held onto. He told me that it obviously had some value because someone offered him money for it in 2001.
Based on the business plan he provided, Mr. Baule’s concept of a company would certainly be a competitor of ours. The information between the two sets of ‘**’ below are taken directly from page six of his business plan:
**
1. Data Mapping/Technology Employment – ability to map out the data structures used by a client and to ready available data for rapid intelligence process.
2. Data conversion – data is converted into information which can easily be analyzed using various olap tools.
**
This is extremely similar to what the software that we’ve developed
does.
Regardless of whether Mr. Baule supplied the keywords for Network Solutions to use, or simply let Network Solutions choose their own keywords to put on his ‘under construction’ page, the keywords were taken from our website. There are a total of 24 keywords on the rapidinsight.com ‘under construction’ site. 22 of these are terms that are on our current site, or were on our site within the last year. This causes a high degree of likelihood of confusion for our customers and prospects. When someone clicks on one of these keywords, it takes them to our competitors’ sites.
At our recent Rapid Insight® software users group, we had several customers tell us that they have mistakenly gone to the rapidinsight.com site, thinking it was ours. Given that our own customers are being confused by this domain, we are certainly losing many prospective customers to this site. This site has been ‘under construction’ for more than 10 years, and this is damaging our business. If the Respondent is allowed to keep the rapidinsight.com domain, and if he does in fact choose to create a web site corresponding to his business plan, he will be infringing on our Rapid Insight® trademark.”
In its Additional Submission dated September 13, 2010 Respondent stated the following:
“The purpose of this document is to respond to the additional information provided by Mr. Laracy (the complainant) on September 8, 2010. I will respond to each individual point made by Mr. Laracy. In order to demonstrate the irrelevance of some of the additional information provided, however, I would first like to frame the issue clearly.
On February 16, 2010, I received a letter from an attorney representing the complainant. The letter made an accusation and a demand. The crux of the accusation was as follows:
“This
web page indicates that it is under construction. As such, it is clear that you have never used
this domain name in commerce and that you are ‘cybersquatting;”
The letter, which it should be noted, was written in a tone best described as hostile, proceeds as follows:
“By this letter, RII demands that you …..(b) assign
the domain registration name of www.rapidinsight.com toRII. A separate domain name assignment form is
enclosed.”
While not, at the time, being familiar with the “cybersquatting”, I did not believe that anyone had the right to seize a domain name for which I had rightly paid.
As I mentioned in my previous response, my friend and an attorney, Mr. Nelson Blitz, attempted unsuccessfully to contact Mr. Oster (the RII attorney) to understand the matter. I now realize that RII had no interest in resolving the matter, they only wished to intimidate and strong-arm me in order to seize my domain name.
Nothing further came of this until August 2010, when I became aware of a complaint filed with the National Arbitration Forum. In order to protect my domain name from unlawful seizure, I was forced to respond to the charge and did so in my submission on September 3, 2010.
My September 3, 2010 response was an attempt to refute the charge of “cybersquatting”. Based upon my research, it appears that the complainant must prove that all three of the following conditions exist in order to justify their accusation:
·
the domain name registrant had a bad-faith
intent to profit from the trademark
·
the trademark was distinctive at the time the
domain name was first registered
·
the domain name is identical or confusingly
similar to the trademark
In my response, I provided evidence that the first two conditions did not exist by providing collateral materials which demonstrated that:
1) I created the domain name rapidinsight.com before Mr. Laracy’s Company was started in 2002. This provides clear indication that Mr. Laracy’s trademark was not distinctive at the time I first registered the domain name.
2) That I did not register the domain with the bad-faith intent to profit from the trademark. Since I registered the domain well in advance of the start of Mr. Laracy’s company.
3) That I have put sincere effort into the development of business plans around the rapid insight name provides additional evidence that my intentions regarding the registering of the domain were in good faith. The fact that my efforts have been slow, small in scale, and intermittent, does not diminish my good faith intent.
4) I have never sold a domain name, demonstrating clearly that I am not in the business of buying domain names simply for the purpose of selling them. rapidinsight.com is the only website that I currently own. The evidence that I provided previously, along with the fact that I registered the domain prior to the inception of Mr. Laracy’s company indicates that I did not register the domain with the intent of selling it to any registered company.
With regard to the third
requirement that the domain name is confusingly similar to the complainant’s
trademark, the emphasis here should be on the word “confusingly”. Per my review of the complainant’s website,
it appears that most of their business is focused on higher education
institutions. In addition, they appear
to be relatively small (only 10 employees per linked in – I do not know if this
is current) and with a small geographic footprint in
I would also venture to guess that given the small size of the Complainant’s company and their industry focused offering, that search-engine marketing is not a significant part of their marketing mix. It is more likely that the clients of the complainant are generated primarily through word of mouth and through direct sales efforts, not by searching for key words on the web.
My point with the above is that this weakens the Complainant’s argument that they are being harmed by the confusion created by the key words on my website’s Network Solutions default page. While admittedly anecdotal, when I did some trial searches on the key words contained on the Network Solutions default page, neither my website nor the client’s website came up. These key terms are quite generic and owned by much larger companies who invest tremendous amounts in search-engine marketing, such as SAP and IBM.
Nevertheless, as I indicated to Mr. Laracy when I spoke to him on the phone, I remain willing to contact Network Solutions and ask them to replace the default “under construction” page with a page containing no key words. This would seem to remedy even the remote possibility of his company being harmed by confusion.
In summary, the Complainant demands that I transfer ownership of my rightfully-registered domain name on the basis that I am “cybersquatting”. I believe that based on the evidence presented, the complainant has failed to substantiate this charge. I further believe that they have used heavy-handed techniques to seize my property through legal intimidation. Most importantly, I believe that I have demonstrated that I registered this domain in good faith with the sincere intent to make use of it and that in no way did I register it with the intent to harm the complainant’s company. I, therefore, respectfully request that their complaint be dismissed.
Below, I have provided responses to the individual points of the Complainant in their additional information submission of September 8, 2010. For convenience, I have provided the Complainant’s response in italics with my response below in Bold.
I do not believe that this is an important
piece of information. It is not
necessary to be registered as a Limited Liability Corporation to
have a business. An LLC is just one form of business. Given that I generated
very little revenue from my business and that I operated without employees, I
elected to operate as a sole-proprietor.
In addition, I do not believe that the amount
of time I spend developing and refining my business plan is relevant. I
registered the domain in a good-faith intent to use it
in my business plan. Whether that plan takes three years (as Mr. Laracy’s did)
or twenty years to fully unfold is beside the point. There are no laws I am
aware of that require the completion of a website in conjunction with a
business plan within a certain period of time.
When I complete my website in conjunction with
my business, I will only be infringing on the Complainant’s trademark if they
can demonstrate that my domain is creating confusion. Per my above points, I
don’t believe that this will be the case.
Nevertheless, the Complainant cannot seek a remedy for an infringement
that has not yet occurred.
By “operated under” it means that I have represented myself to
potential clients and partners as Rapid Insight.
As stated above, it is not necessary to be an LLC or a C-corp in order
to be a business. In addition, whether the company exists or doesn’t, does not
mean that I do not have good faith intentions to use the domain name in the
future as part of an evolving plan.
I do not believe that there is any time limit for me to complete construction
of my website. I registered the domain with the intent of using it in the
future when I was ready to roll out my own business.
I am not
sure that this is relevant since I am not pursuing any action against the
Complainant. However, I would like to note that the complainant states “I had
begun work……and had several users of the product prior to actually
incorporating the company.” This appears to be precisely counter to the point
Mr. Laracy makes at the beginning that my business did not exist because it was
not incorporated.
With offense
taken for Mr. Laracy’s unfounded accusation, what I told Mr. Laracy was that I
had never sold a website and that I was not in the business of selling
domains. I also told him that at the
time I started rapid insight, I had purchased several other sites while my
colleague and I determined the best name. Once we determined that
rapidinsight.com was the best name for our company, we allowed the registration
of the other sites to lapse. I maintained rapidinsight.com because I believed
it to be a great name that would fit well with my long-term plans to start my
own business. I also told Mr. Laracy that I received an offer to sell the
domain in 2001 and refused to consider it precisely because I thought it was
such a good name. This seems to me to provide further proof that I did not
purchase the domain in bad faith.
This is
highly generic language and almost every business maps data and employs
technology. I have now reviewed the complainant’s website and I do not believe
that a business I undertake will infringe on their business. My business would
likely be more oriented towards qualitative financial analysis based upon my
experience. Nevertheless, I don’t believe that the complainant can demand a
remedy for an event which has not yet occurred.
First, this problem will be easily remedied when I ask Network Solutions to change the “under construction” page. I offered to do this initially and the offer stands. Second, any customer who is aware of rapid insight, goes to their website and clicks through to find IBM, SAP or Oracle, all who are linked to this page, most likely will realize that this is not the Rapid Insight that they were expecting. Further, when I experimented by googling rapid insight, every single reference was for the complainant’s company. Not a single reference was to the network solutions “under construction” page. I believe that Mr. Laracy is grossly overstating the potential for confusion. That being said, I will get the “under construction” page changed.”
FINDINGS
The Panel finds that:
1.
the
Domain Name <rapidinsight.com>, is
confusingly similar to Complainant’s marks,
2.
the
Respondent has established rights and legitimate interest in the Domain Name <rapidinsight.com>,
and
3. the Respondent has registered and is using
the Domain Name <rapidinsight.com>, in good faith.
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 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.
Complainant submits evidence to show that it owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for the word mark RAPID INSIGHT (Reg. No. 2,782,031 filed December 11, 2002; issued November 11, 2003). The Panel finds that Complainant has established rights in its RAPID INSIGHT mark under Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant alleges that the <rapidinsight.com>
domain name is identical to its RAPID INSIGHT mark. The Panel finds that the
disputed domain name contains Complainant’s entire mark, absent the space
between the terms of the mark, and adds the generic top-level domain (“gTLD”)
“.com.” Further, the Panel finds that
Respondent’s disputed domain name is identical to Complainant’s mark under
Policy ¶ 4(a)(i).
See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see
also Bond & Co. Jewelers, Inc. v. Tex. Int’l
Prop. Assocs., FA 937650 (Nat.
Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms
and the addition of a gTLD do not establish distinctiveness from the
complainant’s mark under Policy ¶ 4(a)(i).
While Respondent argues that its
registration of the <rapidinsight.com> domain name predates Complainant’s alleged rights
in the mark, the Panel finds that such a determination is not necessary under
Policy ¶ 4(a)(i) as this portion of the Policy
considers only whether Complainant has rights in the mark and whether the
disputed domain name is identical or
confusingly similar to Complainant’s mark. See
AB Svenska Spel v. Zacharov,
D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a
complainant to have registered its trademark prior to the respondent’s
registration of the domain name under Policy ¶ 4(a)(i)
but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v.
NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the
domain name in dispute was first registered in 1996, four years before
Complainant’s alleged first use of the mark, the Panel finds that Complainant
can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
The Panel is of the
view that Complainant has not established a prima facie case in support
of its arguments that Respondent lacks rights and legitimate interests under
Policy ¶ 4(a)(ii).
See Terminal
Supply, Inc. v. HI-LINE ELECTRIC, FA 746752
(Nat. Arb.
Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet
its burden and as a result found that the respondent had rights and legitimate
interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v.
Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the
respondent overcame the complainant’s burden by showing it was making a bona
fide offering of goods or services at the disputed domain name).
Respondent claims that it has become commonly known by the Rapid Insight name from its past business clients and through an attempted business partnership with another firm in the consulting field. Further, Respondent alleges that it has been conducting business under the Rapid Insight name since registering the domain name in 2000. The Panel finds that Respondent has become commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also World Publ’ns, Inc. v. World Pen, Seattle Pen, Inc., D2000-0736 (WIPO Sept. 14, 2000) (finding that as the respondent registered the trade name "WORLD PEN" in July 1996 and had been conducting business under that name since that date, it had rights or legitimate interests in the disputed domain name).
Respondent contends in its Response and Additional Submission that it registered the disputed domain name in May of 2000 in order to establish a technology consulting firm under the name Rapid Insight, LLC. Respondent claims that over the past years it has operated with business clients under this name on three occasions. Respondent claims that because of the length of time needed to build its steady operation in this field that it has taken pauses of operation in order to hold other, more steady positions. Respondent further contends that it continues to evolve the business plan in an effort to obtain full-time operating capabilities in the future. Respondent submits its business plan and some information to show that it has conducted business under the Rapid Insight, LLC name since registering the domain name in 2000. Respondent argues that it has not needed to establish its webpage yet because its business has been acquired via word of mouth, but that its future goal is to establish a website to further the goals of the business. Respondent further contends that the website that Complainant has provided a screen shot for is not controlled by Respondent, but is controlled entirely by the registrar and that Respondent cannot be responsible for the content and links placed upon the website. In its Additional Submission Respondent further argues that it offered to remove the “under construction” website and will request such removal from the registrar of the domain name. The Panel therefore finds that Respondent has used the disputed domain name, or shown preparations to use such domain name for 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 SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (holding that the respondent’s submission of an invoice demonstrating that the respondent has been planning to trade under the name PURKHON KI YADEN since at least as early as January 28, 2000, was evidence that the respondent had rights or legitimate interests in the disputed domain name).
The Panel is of the view that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since the Panel concluded that Respondent has rights or legitimate interests in the <rapidinsight.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Furthermore the Panel is of the view that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). As a result the Panel further finds that Respondent has not registered or used the <rapidinsight.com> domain name in bad faith. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent alleges that it acquired
the <rapidinsight.com>
domain name in a good faith effort to further its business
interests. Respondent contends in its
Response and Additional Submission that it is not a competitor of Complainant
and that it has not attempted to attract Internet users to its domain name
because it is not fully developed at this time.
Respondent contends that its business is more likely to be oriented
towards qualitative financial analysis based upon its experience, and that this
type of use would not be in competition with Complainant. Respondent argues that it has maintained its
efforts at establishing its company and has continued to pay the registration
fees for the disputed domain name in order to progress its business plan of
having a viable website in the future. Further Respondent argues that it has
not attempted to sell any domain names including the disputed domain name. The
Panel finds that Respondent did not register the disputed domain name in bad
faith because Respondent registered the domain name for a legitimate business
interest and has shown demonstrable preparations to use the domain name as such
in the future. See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000)
(finding that the respondent did not register or use the domain name
<metagen.com> in bad faith where the respondent registered the domain
name in connection with a fair business interest and no likelihood of confusion
was created); see also Chestnutt v. Tumminelli, D2000-1758 (WIPO
Feb. 2, 2001) (finding that the respondent did not register and use the
<racegirl.com> domain name in bad faith because the complainant provided
no evidence that the respondent intended to disrupt or divert business from the
complainant).
Respondent also
argues within its Response and Additional Submission that it registered the
disputed domain name on May 4, 2000 and that its registration of the domain
name predates Complainant’s company being in existence. Respondent contends that it therefore
registered the domain name in good faith because at the time of registering the
domain name there was no infringement of Complainant’s unknown mark. Respondent
asserts in its Additional Submission that there can be no bad faith intent upon
such grounds as this case presents because Respondent could not have known
about Complainant’s company and mark at the time of registering the domain
name. The Panel finds that Respondent’s
registration of the disputed domain name predates Complainant’s rights in the
RAPID INSIGHT mark, and that Respondent could not have registered the domain
name in bad faith. See Interep Nat'l Radio Sales, Inc. v. Internet
Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad
faith where the respondent registered the domain prior to the complainant’s use
of the mark); see also
Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16,
2007) (finding the respondent could not have registered or used the disputed
domain name in bad faith where the respondent registered the disputed domain
name before the complainant began using the mark).
DECISION
Since Complainant has not established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dr. Reinhard Schanda Panelist
Dated September 23, 2010
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