Intelius, Inc. v. Kim Sang Hyun
Claim Number: FA0605000703175
PARTIES
Complainant is Intelius, Inc. (“Complainant”), represented by Stephanie J. Simmons, of Lane Powell, PC, 1420 Fifth Avenue, Suite 4100, Seattle, WA 98101. Respondent is Kim Sang Hyun (“Respondent”), Maam-ri Okcheon-eup, Okcheon-gun, Chungcheongbuk-Do 373808, KR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <intellus.com>,
registered with Korea Information
Certificate Authority, Inc. d/b/a DomainCA.com.
PANEL
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.
Mr. Myungsuk Choi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 10, 2006; the National Arbitration Forum received a hard
copy of the Complaint on May 12, 2006.
On May 11, 2006, Korea Information Certificate Authority, Inc. d/b/a
DomainCA.com confirmed by e-mail to the National Arbitration Forum that the <intellus.com> domain name is
registered with Korea Information Certificate Authority, Inc. d/b/a
DomainCA.com and that the Respondent is the current registrant of the
name. Korea Information Certificate
Authority, Inc. d/b/a DomainCA.com has verified that Respondent is bound by the
Korea Information Certificate Authority, Inc. d/b/a DomainCA.com 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 May 19, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 8, 2006 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@intellus.com by e-mail.
On June 7, 2006, pursuant to the Forum Rules, an Order was entered
extending to June 19, 2006, the date on which the Response was to be submitted,
due to extenuating circumstances.
A timely Response was received and determined to be complete on June
19, 2006.
On June 22, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mr. Myungsuk Choi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
On January 9, 2003, Complainant, a company
located in the State of Washington, U.S.A., registered a service mark of “INTELIUS”
to USPTO. The mark covers the services relating to collection,
preparation, composition, storage, processing, acquisition and provision of
business information, data, statistics and indices and computer service providing
temporary use of non-downloadable computer software for search and retrieval of
information relating to people. Also, Complainant
registered the domain name of “intelius.com” and has used it since then.
On the basis of these facts, Complainant
asserts that the disputed domain name, <intellus.com> which was registered on August 24, 2004,
is confusingly similar to Complainant’s service
mark INTELIUS and Complainant’s domain name.
In addition, Complainant argues that Respondent
has never used the name INTELLUS, has never been commonly known by the name and
has acquired no right or legitimate
interest in the name.
Complainant also alleges that Respondent has registered the disputed
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration, for
the purpose of disrupting Complainant’s business by inducing the customers, whose intention is
to connect to Complainant’s webpage, to Respondent’s webpage which provides set of links to various online search
services which are similar to or competing with Complainant, or for the purpose
of attracting, for commercial gain, internet users to its website by creating a likelihood of confusion with
Complainant’s mark.
B. Respondent
Meanwhile, Respondent argues that he purchased
the domain name at issue from Kim Do Wan at the price of 20 million
KRW(approximately US$20,000) as his web management business and alleges that he
was not aware of Complainant and its service mark at all.
Respondent also asserts that Complainant cannot
claim its right on the disputed domain name against Respondent because
Complainant never registered its service mark in Republic of Korea and has not
involved in any business which targets residents of Republic of Korea.
Specifically, Respondent argues that
Complainant’s service mark and domain name are not similar to the disputed
domain name and that Respondent retains the right and legitimate interest in
using the disputed domain name for the purpose of administering a gate website.
Respondent further asserts that he neither has any
intention to place the domain name at issue for sale nor has used it in bad
faith.
FINDINGS and DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Policy”) instructs the 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.
According to Exhibit
A of William Beaver’s statement and Exhibit B and C of Stephanie Simmons’
statement, Complainant appears to have registered the service mark “INTELIUS”
to USPTO and have used the same name as a domain name.
Before examining the
similarity between Complainant’s service mark and the disputed domain name, Panel
first reviews the characteristic of Complainant’s service mark.
Whether service mark
terms can be protected or not depends upon the character of the terms. While
arbitrary and unique terms deserve strong protection, generic terms do not get
as strong protection. In between are suggestive terms, which suggest but
do not describe the features and characteristics of the product or service, and
descriptive terms, which do describe them. Suggestive terms can be protected immediately upon use;
descriptive terms can be protected only upon proof that they have acquired
distinctiveness (Action Adventure Travel, Inc. v. Island Adventure
Tours, WIPO D2004-0440.) In this case, the term used in Complainant’s service
mark, which is not currently in general usage, cannot be categorized as generic
or descriptive term. Rather it can be regarded as a suggestive term.
Comparison of
Complainant’s service mark “INTELIUS” with the disputed domain name
<intellus.com>, with the acknowledgement of the characteristic of the
service mark stated above, leads to the finding that the first part of the
disputed domain name without the part of “.com” differs from Complainant’s
service mark by only one letter – English letter “I” is replaced by a letter “L”
– and they are very similar visually.
Upon finding that Complainant’s service mark attains distinctiveness by
adopting a suggestive term, it is deemed to say that the visual similarity
found here sums to confusing similarity set forth in the Policy(Reuters
Limited v. Global Net 2000, Inc, WIPO D2000-0441.)
Complainant provided
enough evidence to prove that
Respondent does not acquire any right on a trade mark or a service mark with
regard to the disputed domain name. And it has been found that Complainant has
not allowed Respondent to use Complainant’s service mark or its confusingly
similar service mark. Accordingly, Complainant has made a prima facie showing
and the burden of proof shifts to Respondent (Do The Hustle, LLC v. Tropic Web, WIPO D2000-0624, G.D. Searle v. Martin Mktg., Nat. Arb.
Forum FA118277.)
Respondent asserts
that he registered the disputed domain name before Complainant and he used it
in connection with a gate website which was independently set up from
Complainant’s website. However, the proof is not sufficient and the argument of
prior registration of the disputed domain name is not relevant because it is
evidenced that Complainant registered its service mark and domain name before
the registration of the disputed domain name.
Paragraph
4(c) of the policy set forth that any
of the following circumstances, in particular but without limitation, if found
by the Panel to be proved based on its evaluation of all evidence presented,
shall demonstrate Respondent’s rights or legitimate interests to the domain
name:
(1)
before any notice to Respondent of the dispute, Respondent’s use of, or
demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods or services;
or
(2) Respondent (as an individual,
business, or other organization) has been commonly known by the domain name,
even if Respondent has acquired no trademark or service mark rights; or
(3) Respondent is are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.
However, in this
case, Respondent failed to prove any circumstances stated in Paragraph 4(c) of
the Policy. Accordingly, the Panel does
not find Respondent’s rights or legitimate interests to the disputed domain
name.
Paragraph
4(b) of the Policy set forth that the following circumstances, in particular
but without limitation, if found by the Panel to be present, shall be evidence
of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the
respondent has registered or the respondent has acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the complainant who is the owner of the trademark
or service mark or to a competitor of that complainant, for valuable
consideration in excess of the respondent’s documented out-of-pocket costs
directly related to the domain name; or
(ii) the respondent has registered the
domain name in order to prevent the owner of the trademark or service mark from
reflecting the mark in a corresponding domain name, provided that the
respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the
domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, the
respondent has intentionally attempted to attract, for commercial gain,
Internet users to the respondent’s web site or other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of the respondent’s web site
or location or of a product or service on the respondent’s web site or
location.
In this case,
Respondent did not register the disputed domain name, but obtained it from the
other party after the registration. However, there is no reason to
differentiate between a direct
registration and acquisition after an initial
registration (MC Enterprises v. Mark
Segal, WIPO D2005-1270, Ideenhaus
Kommunikationsagentur GMbH Ideenhaus GmbH, WIPO D2004-0016.)
From the review of
this case, the Panel found that:
(1) On February 11, 2005,
the web site using domain name at dispute posted an advertising sentence – “We
will accept your offer which satisfied our quote price of the domain name.” –,
with an e-mail address of “Kim Do Wan” as a contact person (Exhibit D attached
to Beaver statement);
(2) In response to
Complainant’s e-mail(April 3, 2006) where Complainant asked Respondent to
transfer the disputed domain name, Kim Do Wan – not Respondent – sent an e-mail
from the e-mail address set forth in (1) on April 4, 2006 and requested consideration
of US$20,000 arguing that the same amount of money had been paid by Respondent
in order to purchase the disputed domain name (Exhibit E attached to Beaver
statement); and
(3) When Complainant
asked the supporting document to prove that the disputed domain name was
purchased at the alleged amount of money, Kim Do Wan replied on behalf of
Respondent that no supporting document
exist and argued that Respondent had purchased the disputed domain name directly
form the third party (Exhibit H, I attached to Beaver statement).
These findings are
sufficient to conclude that there had been advertisement of selling the
disputed domain name before Respondent purchased it and an offer of sale at the
consideration of $20,000 – without any supporting document for the compensation
– was placed when Complainant contacted Respondent.
Respondent submitted
a copy of “Domain Sales Agreement”, which, Respondent alleges, was made between
him and Kim Do Wan when he purchased the disputed domain name from Kim Do Wan,
along with the response. However, the Panel cannot believe the contents of this
document because it contradicts the assertions, made by Kim Do Wan in the
response e-mails to Complainant, that is, (1) there is no proof for a sales
agreement of the disputed domain name and (2) the third party, not Kim Do Wan,
was a seller.
Hence, the Panel concludes that what Respondent did amounts to the act of acquiring the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name and Paragraph 4(b)(i) of the Policy has been satisfied.
In addition, the Panel also found that:
(4) The website, which is represented by the disputed domain name, provides links to Complainant’s competitors; and
(5) The same website provides a link to Complainant’s website.
When these two facts
are reviewed along with the fact that the disputed domain name is confusingly
similar to Complainant’s domain name and its service mark, it is shown that the
Respondent has attracted internet users to Respondent’s website, for the
commercial benefit, with the knowledge of Complainant’s service mark or its
domain name and the intention to create confusion
as to its source, sponsorship, affiliation, or endorsement.
Accordingly, Paragraph 4(b)(iv) of the Policy, which states “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location”, has been satisfied too.
Conclusively, the
Panel finds the disputed domain name has been used in bad faith by Respondent.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <intellus.com>
domain name be TRANSFERRED from Respondent to Complainant.
Myungsuk Choi, Panelist
Dated: July
5, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum