Internet Billing Company LLC v. Brian Yu
d/b/a iContents
Claim Number: FA0302000146944
PARTIES
Complainant
is Internet Billing Company LLC,
Deerfield Beach, FL, USA (“Complainant”) represented by Barry C Leeper. Respondent
is Brian Yu d/b/a iContents, Seoul,
SOUTH KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <i-bill.com>,
registered with Tucows.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on February 27, 2003; the Forum received a hard copy of the
Complaint on March 4, 2003.
On
February 28, 2003, Tucows confirmed by e-mail to the Forum that the domain
name(s) <i-bill.com> is
registered with Tucows and that Respondent is the current registrant of the
name. Tucows verified that Respondent
is bound by the Tucows registration agreement and 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
March 5, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 25,
2003, 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@<I-BILL.COM> by e-mail.
A
Response was received on March 25, 2003. The Response is in Korean although the
language of the Registration Agreement is English.
On March 31, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
1. The domain name registered by Respondent
contains in its entirety a mark in which Complainant has rights.
2. Respondent has no rights to or legitimate
interests in the mark or domain name.
3. Respondent registered and used the domain
name in bad faith.
B. Respondent’s Response was in Korean
although the language of the Registration Agreement is English.
FINDINGS
Complainant has shown in this proceeding that it has
rights in the IBILL and IBILL.COM mark and domain name by virtue of numerous
registrations of the mark and related design logos with the United States
Patent and Trademark Office and by continuous use in commerce as early as
December 1, 1995. Complainant’s area of
commerce is Internet billing, collection services, and computer consulting
services.
Complainant’s enterprise is well known
internationally and the mark and domain name used by Complainant have distinguished
Complainant’s goods and services from others who accept and process real time
payments for goods and services purchased over the Internet.
Complainant owns numerous trademark numbers for its
marks, including Registration Numbers 2,617,669; 2,143,923; 2, 247,225;
2,574,619; 2,216,085 and 2,617,669. Complainant also has shown that it has
common law rights in the mark and related design logos, has invested
extensively in the mark, has spent more than $15 million in development of and
promotion of its website and has established significant good will in the
mark. Complainant’s co-branded billing
and collection services handled about $800,000,000 in consumer transactions
during the year 2001. Forbes Magazine among other financial periodicals and
newspapers recognized Complainant’s website as one of the twenty most visited
B2B sites in the United States.
Complainant has vigorously defended and enforced its
mark and has negotiated with others to reach agreed settlements of disputes.
Respondent registered the <I-BILL.COM> mark May 5,
2001, some six years after Complainant’s first use in commerce, five years
after Complainant filed for trademark protection, and three years after
Complainant’s application for trademark was approved.
Complainant first used the mark IBILL in commerce in
1997 but registered it September 10, 2002.
The sole difference between Complainant’s IBILL and
IBILL.COM marks and the domain name registered by Respondent is the hyphen that
Respondent placed between the “I” and the “BILL” in the domain name registered
by Respondent.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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;
(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.
Complainant
holds numerous trademarks for IBILL registered with the United States Patent
and Trademark Office, including Registration Numbers 2,617,669 and 2,143,923,
among others.
Complainant
asserts that the domain name registered by Respondent, <i-bill.com>,
is identical to Complainant’s IBILL mark because it merely inserts a hyphen
between the “i” and “bill” and adds the top-level domain “.com.” The Panel finds that the addition of a
hyphen to a domain name does not add any distinct characteristics capable of
overcoming a claim that the domain name is identical or confusingly
similar. See Nintendo
Of Am. Inc. v. This Domain Is For Sale,
D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and
confusingly similar to the Complainant’s GAME BOY mark, even though the domain
name is a combination of two descriptive words divided by a hyphen); see
also InfoSpace.com v. Tenenbaum Ofer,
D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name
‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition of a hyphen and .com are not distinguishing features”).
Furthermore, a top-level domain such as
“.com” does not add distinguishing characteristics because a top-level domain
is a required element of all domain names. See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar); see
also Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to
Complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant).
Without a proper, timely Response from
Respondent in the language of the agreement the Panel has nothing before it to
refute Complainant’s allegations. The Panel
finds that the UDRP Policy ¶ 4(a)(i) concerning whether or not the domain name
is identical to or confusingly similar has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the
<i-bill.com>
domain name because Respondent is not commonly known as I-BILL or
<i-bill.com>. Complainant asserts that Respondent is
commonly known as iContents, a business that engages in the sale of domain
names. Based on this information the
Panel finds that Respondent has no rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent has no rights in a domain name when Respondent is not known by the
mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat.
Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Complainant asserts that Respondent is in
the business of selling domain names.
Currently, the <i-bill.com> domain name resolves to a
website that offers the domain name registration of <i-bill.com>
for sale. Complainant notes that
Respondent has made no other use of the domain name. The Panel may find that Respondent’s attempted sale of the
disputed domain name registration does not amount to a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) and that it is not a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat.
Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist
when one has made no use of the websites that are located at the domain names
at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance
Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights
or legitimate interests where Respondent registered the domain name with the
intention of selling its rights).
Without a
timely, proper Response in the language of the Registration Agreement, the
Panel has nothing from the Respondent to challenge Complainant’s assertions. See Telstra Corporation Ltd v. Mr. Jeon (No.
D2001-1161 WIPO November 28, 2001) (holding that where the Panel may
exercise power to require a translation of foreign language documents; such
action is not required where Respondent has had ample opportunity to make an
additional response that is in compliance with the rules).
The Panel finds that Policy ¶ 4(a)(ii) requiring a
showing that Respondent has “no rights or legitimate interests” has been
satisfied.
Complainant asserts that Respondent
registered the domain name with the intention of selling it to
Complainant. Complainant notes that
when it contacted Respondent, Respondent replied that the domain name
registration was for sale for $85,000.
Complainant asserts that this price is far beyond Respondent’s
out-of-pocket expenses and is evidence of Respondent’s bad faith registration
and use pursuant to Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347
(WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any
context other than to offer it for sale to Complainant amounts to a use of the
domain name in bad faith); see also World
Wrestling Fed’n Entmt., Inc. v. Bosman,
D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in
bad faith because he offered to sell the domain name for valuable consideration
in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26,
2000) (finding that the Respondent demonstrated bad faith when he requested
monetary compensation beyond out-of-pocket costs in exchange for the registered
domain name).
Complainant asserts that Respondent has
engaged in the practice of registering domain names that incorporate the marks
of others. Complainant notes that
approximately 169 of Respondent’s domain name registrations appear to be
derived from registered trademarks.
Complainant argues that Respondent is engaging in a pattern of bad faith
registration pursuant to Policy ¶ 4(b)(ii). See Harcourt, Inc. v.
Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one
instance of registration of several infringing domain names satisfies the burden
imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum
Aug. 17, 2000) (finding that Respondent
violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe
upon others’ famous and registered trademarks).
Without a timely, proper Response in the
language of the Registration Agreement, the Panel has nothing before it to
challenge Complainant’s assertions. The
Panel finds that Policy ¶ 4(a)(iii)
requiring a showing of “bad faith” has been satisfied.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <i-bill.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: April 14, 2003.
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