Intelius Inc. v. Registerfly.com c/o Responsible Party
Claim Number: FA0611000841080
Complainant is Intelius Inc. (“Complainant”), represented by Parna
A. Mehrbani, of Lane Powell PC, 601 SW Second Ave.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <inteliuscenter.com>, registered with Enom, 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 November 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 15, 2006.
On November 14, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <inteliuscenter.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 7, 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@inteliuscenter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2006, 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." 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 <inteliuscenter.com> domain name is confusingly similar to Complainant’s INTELIUS mark.
2. Respondent does not have any rights or legitimate interests in the <inteliuscenter.com> domain name.
3. Respondent registered and used the <inteliuscenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Intelius Inc., provides background and credit checks as well as employment and tenant screenings for businesses and individuals. Complainant contends that it has continuously used the INTELIUS mark in commerce since February 26, 2003 and owns a trademark registration for INTELIUS with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,096,294 issued May 23, 2006; filed January 1, 2003).
Respondent registered the <inteliuscenter.com> domain name on December 30, 2005. Respondent’s disputed domain name resolves to a website that features newspaper articles containing information regarding Complainant as well as numerous links to various unrelated web pages.
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.
Although the USPTO did not approve the INTELIUS mark for registration until May 2006, it is well established that Complainant’s rights date back to the filing date of the trademark application. In the instant case, Complainant filed an application for the INTELIUS mark on January 1, 2003. As Respondent did not register the <inteliuscenter.com> domain name until December 30, 2005, the Panel finds that Complainant has established rights in the mark sufficient to satisfy Policy ¶ 4(a)(i). See J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant contends that Respondent’s <inteliuscenter.com> domain name is confusingly similar Complainant’s established mark. Respondent’s domain name features Complainant’s INTELIUS mark in its entirety and adds the generic term “center” in addition to the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither the addition of the gTLD “.com” nor the generic term “center” differentiates the <inteliuscenter.com> domain name in such a way that it removes it from the realm of confusing similarity for purposes of Policy ¶ 4(a)(i). See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <inteliuscenter.com> domain name. Panels have found that such assertions may be enough to establish a prima facie case under the UDRP. Moreover, once a prima facie case has been established, the burden shifts to Respondent to set forth evidence of rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant contends that Respondent is using the <inteliuscenter.com> domain name to
operate a website, the content of which includes articles relating to
Complainant as well as numerous links to various commercial websites. The Panel finds that Respondent’s use is not
a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(i). See
Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006)
(finding that the respondent’s use of a domain name to redirect Internet users
to websites unrelated to a complainant’s mark is not a bona fide use
under Policy ¶ 4(c)(i)); see also Golden
Bear Int’l, Inc. v. Kangdeock-ho, FA
190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to websites
unrelated to Complainant's business does not represent 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).”).
Furthermore, Complainant contends that Respondent is neither commonly known by the disputed domain name nor licensed to register domain names featuring Complainant’s INTELIUS mark. The Panel finds that in the absence of evidence suggesting otherwise, Respondent has failed to establish rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends that Respondent is using the <inteliuscenter.com> domain name to operate a website featuring links to various unrelated web sites. The Panel infers that Respondent is collecting referral fees from the various linked web pages for each misdirected Internet user. As such, the Panel finds that Respondent’s use of the confusingly similar <inteliuscenter.com> domain name for its own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
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 <inteliuscenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 28, 2006
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