IntelliServ, Inc. v. Intelliserv Consulting, Inc.
Claim Number: FA0703000944820
Complainant is IntelliServ, Inc. (“Complainant”), represented by Paul
C. Van Slyke, of Locke Liddell & Sapp LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <intelliserv.com>, registered with Network Solutions, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 26, 2007.
On
On April 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 26, 2007 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@intelliserv.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <intelliserv.com> domain name is identical to Complainant’s INTELLISERV mark.
2. Respondent does not have any rights or legitimate interests in the <intelliserv.com> domain name.
3. Respondent registered and used the <intelliserv.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, IntelliServ,
Inc., provides cutting-edge technology for directional drilling of oil, gas or
geothermal wells. In connection with its
directional drilling products and services, Complainant has registered the
INTELLISERV mark with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 2,684,805 issued
Respondent, Intelliserv
Consulting, Inc., registered the <intelliserv.com> domain
name on
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.
While the Panel can find ample evidence to support
Complainant’s position as to Policy paragraph 4(a)(i) “identical or confusingly
similar;” (ii) “ no rights or legitimate interests;” and that portion of (iii)
relating to use in bad faith; there is no allegation or evidence that
Respondent “registered the domain name in bad faith.” As has been noted in many cases, Policy paragraph
4(a)(iii) requires that there be bad faith in
registration as well as use of the domain name. See Telstra Corp. Ltd. v. Nuclear Marshmallow, D2000-0003 (WIPO Feb. 18, 2000).
“Several groups suggested during the
initial consideration of the uniform policy that the definition should be
expanded to include cases of either: registration or use in bad faith,
rather than: registration and use in bad faith. From
the fact that the ICANN Board accepted the approach recommended in the Second
Staff Report, and thus adopted the Uniform Policy in the form originally
proposed, it is clear that ICANN intended that bad faith registration alone not
give rise to a remedy under the Uniform Policy. For a remedy to be available, the Complainant
must prove both that the domain was registered in bad faith and that it is
being used in bad faith.”
Respondent registered the <intelliserv.com>
domain name on November 1, 1996, which predates Complainant’s
registration with the USPTO by over five years.
Because the domain name registration predates Complainant’s rights in
the mark, the Panel finds no bad faith registration of the disputed domain name
under Policy ¶ 4(a)(iii). See
Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174
(WIPO
Accordingly, while the Panel understands and sympathizes with Complainant in its dilemma, the Panel is bound by the ICANN Policy and Rules and therefore finds that Complainant has not satisfied Policy ¶ 4(a)(iii)
Because the Panel has found that Complainant has failed to
prove one of the prime elements, to wit: bad faith registration, there is no
need to consider whether Complainant proved the other elements. See Creative Curb v. Edgetec Int’l Pty.
Ltd., FA 116765 (Nat. Arb. Forum
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Louis E. Condon, Panelist
Dated:
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