Intelius Inc. v. Trade Out Investments Ltd / Tech Support
Claim Number: FA1204001440279
Complainant is Intelius Inc. (“Complainant”), represented by Parna A. Mehrbani of Lane Powell PC, Oregon, USA. Respondent is Trade Out Investments Ltd / Tech Support (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inteilus.com>, registered with Power Brand Center Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2012; the National Arbitration Forum received payment on April 20, 2012.
On April 23, 2012, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <inteilus.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 2012 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@inteilus.com. Also on April 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 22, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant made the following contentions:
1. Complainant owns rights in the INTELIUS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,096,294 registered May 23, 2006). See Exhibit C.
2. Complainant uses the INTELIUS mark in its business providing employment and tenant screening, background and credits checks, and public record searches for businesses and individuals.
3. Respondent registered the <inteilus.com> domain name on November 2, 2009.
4. Respondent’s disputed domain name resolves to a web page that features links to products and services that are similar to those of Complainant.
5. Respondent’s disputed domain name is confusingly similar to the INTELIUS mark.
6. Respondent has no trademark rights in the <inteilus.com> domain name.
7. Respondent’s disputed domain name is a typosquatted version of Complainant’s mark.
8. Respondent registered the disputed domain name in order to sell, rent, or transfer the registration to Complainant.
9. Respondent registered the disputed domain name in order to disrupt Complainant’s business.
10. Respondent earns “click-through” fees by hosting commercial hyperlinks on its website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing an online service to enable internet users to make employment, tenant, background and credit checks.
2. Complainant owns rights in the INTELIUS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,096,294 registered May 23, 2006).
3. Respondent registered the <inteilus.com> domain name on November 2, 2009.
4. The disputed domain name resolves to a web page that provides links to services and products that are in competition with those of Complainant.
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."
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.
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.”).
The first question is whether Complainant has rights in a trademark or service mark.Complainant contends that it owns rights in its INTELIUS mark through its registration with the USPTO (Reg. No. 3,096,294 registered May 23, 2006). The panels in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) both concluded that registration of a mark with the USPTO serves to establish a complainant’s rights in that mark. The Panel determines that by registering its INTELIUS mark with the USPTO, Complainant successfully secured rights in the mark for the purposes of Policy ¶ 4(a) (i), regardless of the location of Respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The second question is whether the disputed domain name is identical or confusingly similar to the INTELIUS mark. Complainant alleges that the <inteilus.com> domain name is confusingly similar to the INTELIUS mark, because the domain name is an intentionally misspelled version of the mark. The Panel notes that the domain name transposes the letters “l” and “i” of the mark within the domain name. The panel in Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005), held that the <wynhdam.com> and <wyandham.com> domain names were confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark. The Panel also notes that the domain name includes the generic top-level domain (“gTLD”) “.com.” In Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panel stated that adding a top-level domain is not relevant when making a determination as to confusing similarity to a mark, because a top-level domain is a required element in domain names. The Panel finds that transposing letters in a mark and adding a gTLD does not negate the disputed domain name’s confusing similarity to the INTELIUS mark under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s INTELIUS trademark and to use it in its domain name , transposing the letters “l” and “i” of the mark within the domain name and thus enhancing the confusing similarity between the domain name and the trademark;
(b) Respondent has then decided to use the domain name by causing it to resolve to a website containing links to services and products that are in competition with those of Complainant.
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent is not commonly known by the <inteilus.com> domain name, as demonstrated by the WHOIS information identifying “Trade Out Investments Ltd” as the registrant. Prior panels have stated that a respondent is not commonly known by the disputed domain name when the WHOIS information does not support such a finding and the respondent failed to submit evidence to indicate otherwise. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). The Panel concludes that the WHOIS information and the lack of other supporting information demonstrates that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
(e) Complainant contends that Respondent uses the <inteilus.com> domain name to collect revenue from Respondent’s resolving website, which hosts “pay-per-click” hyperlinks that resolve to websites belonging to Complainant and Complainant’s competitors. Complainant submits a screen shot that shows the displayed hyperlinks at Respondent’s resolving webpage and argues that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use. See Exhibit F. The Panel determines that by using the disputed domain name to benefit financially from the content on the resolving website, Respondent is not making a bona fide offering of goods and 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 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)).
(f) Complainant alleges that Respondent takes advantage of typographical errors that consumers might make when seeking Complainant’s website and that such typosquatting is evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). The panels in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003), and Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003), stated that engaging in typosquatting by taking advantage of Internet users who seek a complainant’s website but misspell the complainant’s mark demonstrates that a Respondent has no rights or legitimate interests in a disputed domain name. The Panel concludes that Respondent uses the <inteilus.com> domain name to redirect users who misspelled Complainant’s mark, which indicates that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent registered the disputed domain name for the purpose of selling or transferring the domain name to Complainant in excess of out-of-pocket costs related to registration. As the Panel determines that Respondent registered the <inteilus.com> domain name with the intent to sell it for consideration exceeding registration costs, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b) (i). See Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website”).
Secondly, Complainant argues that Respondent’s use of the <inteilus.com> domain name intentionally disrupts Complainant’s business, because the resolving website displays automatically-generated hyperlinks to similar online search services to those provided by Complainant’s business. The panel in Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), stated that using the domain name to operate a commercial search engine that contained links to a complainant’s competitors demonstrated bad faith registration and use under Policy ¶ 4(b) (iii). Further, in Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007), the panel held that the respondent used the domain name to feature hyperlinks to competing websites as well as a link to the complainant’s website, which constituted bad faith disruption of Complainant’s business under Policy ¶ 4(b) (iii). The Panel concludes that by displaying hyperlinks to Complainant’s competitors, Respondent’s registration and use of the disputed domain name was in bad faith pursuant to Policy ¶ 4(b) (iii).
Thirdly, Complainant alleges that Respondent created a likelihood of confusion as to Complainant’s affiliation with the disputed domain name and attempted to attract Internet users to its website in order to make a commercial profit. Previous panels have concluded that when a respondent registers a domain name with the purpose of confusing customers and attempting to attract Internet traffic to its website in order to make a financial gain, the respondent demonstrates bad faith registration and use under 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 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) (iv) 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). The Panel finds that Respondent’s use of the disputed domain name as a links directory website for the purpose of confusing consumers and attracting Internet traffic to its website for financial gain is evidence of bad faith registration and use under Policy ¶ 4(b) (iv).
Fourthly, Complainant contends that Respondent is attempting to capitalize on a common misspelling of Complainant’s INTELIUS mark, which it argues is evidence of bad faith registration and use under Policy ¶ 4(a) (iii). The Panel concludes that Respondent’s registration and use of the <inteilus.com> domain name was in bad faith pursuant to Policy ¶ 4(a) (iii) as it also finds that the disputed domain name is a typosquatted version of Complainant’s mark. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.)
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the INTELIUS trademark and changing the spelling of that word slightly and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <inteilus.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 23, 2012
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