Intelius Inc. v. E-Promote
Claim Number: FA1008001338760
Complainant is Intelius Inc. (“Complainant”), represented by Parna
A. Mehrbani, of Lane Powell PC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <intelius.org>, registered with Dotster, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2010.
On August 4, 2010, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <intelius.org> domain name is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 5, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 25, 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@intelius.org by e-mail. Also on August 5, 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 September 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <intelius.org> domain name is identical to Complainant’s INTELIUS mark.
2. Respondent does not have any rights or legitimate interests in the <intelius.org> domain name.
3. Respondent registered and used the <intelius.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Intelius Inc., is an online provider of computer services including the collection, preparation, composition, storage, processing, acquisition and provision of business information and search engine services. Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for its INTELIUS mark (Reg. No. 3,096,294 filed January 9, 2003; issued May 23, 2006).
Respondent, E-Promote, registered the <intelius.org> domain name on March 24, 2005. Respondent’s disputed domain name features third-party hyperlinks to competing online records search services as well as to unrelated websites.
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.
The Panel finds that Complainant has satisfied the
requirements of Policy ¶ 4(a)(i) through its trademark registration with the
USPTO for the INTELIUS mark (Reg. No. 3,096,294 filed January 9, 2003; issued
May 23, 2006). 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 Hershey Co.
v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the
complainant’s rights in the KISSES trademark through registration of the mark
with the USPTO “date back to the filing
date of the trademark application and predate [the] respondent’s
registration”).
Complainant argues that Respondent’s <intelius.org> domain name is identical to Complainant’s INTELIUS mark because the domain name contains its entire mark with the addition of the generic top-level domain (“gTLD”) “.org.” The Panel agrees and finds that Respondent’s <intelius.org> domain name is identical to Complainant’s INTELIUS mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has contended that Respondent does not have
rights and legitimate interests in the <intelius.org>
domain name. Once Complainant
makes a prima facie case in support
of its allegations, the burden shifts to Respondent to prove that it does have
rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a
sufficient prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume that Respondent does not have rights and
legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights and legitimate interests in the
disputed domain name under Policy ¶ 4(c).
See Document Techs., Inc.
v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although
Paragraph 4(a) of the Policy requires that the Complainant prove the presence
of this element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June
27, 2000) (finding it appropriate for the panel to draw adverse inferences from
the respondent’s failure to reply to the complaint).
Complainant asserts that Respondent is not commonly known by the <intelius.org> domain name. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s INTELIUS mark. The WHOIS information identifies the domain name registrant as “E-Promote,” which Complainant contends is not similar to Respondent’s <intelius.org> domain name. Respondent has failed to respond to these allegations and has failed to present evidence that would suggest that Respondent is not commonly known by the disputed domain name. The Panel concludes that Respondent is not commonly known by the <intelius.org> domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s <intelius.org> domain name resolves to a website that features third-party links to both unrelated and competing websites as well as to Complainant’s official <intelius.com> website. Complainant argues that Respondent’s website allows Internet users to search for the same or similar information located on Complainant’s official website, including “background check” and “people search.” Complainant contends that Respondent receives click-through fees from the businesses advertised, and linked-to, on Respondent’s website. The Panel finds that such use of an identical domain names does not constitute 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 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered and is using
the disputed domain name primarily for the purpose of disrupting Complainant’s
business. Previous panels have found a
respondent’s use of an identical domain name resolving to a website featuring competing
third-party hyperlinks constitutes a disruption of a complainant’s business. See
Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent
used the disputed domain name to operate a commercial search engine with links
to the complainant’s competitors); see
also 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). Respondent’s <intelius.org> domain name features third-party
hyperlinks to Complainant’s competitors in the “background check” and “people
search” categories of the information gathering industry. Therefore, the Panel finds Respondent’s use
of the disputed domain names disrupts Complainant’s online presence and
constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant alleges, and the Panel infers, that Respondent profits from its receipt of click-through fees from its commercial search engines and various third-party hyperlinks to businesses both in competition with and unrelated to Complainant. Respondent is attempting to profit by creating a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <intelius.org> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 20, 2010
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