InfoTrax Systems, LC v. Information Tracking Systems, Inc.
Claim Number: FA1409001580042
Complainant is InfoTrax Systems, LC (“Complainant”), represented by Matthew A. Barlow of Workman Nydegger, Utah, USA. Respondent is Information Tracking Systems, Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infotrax.com>, registered with NETWORK SOLUTIONS, LLC.
The undersigned, Daniel B. Banks, Jr., as Panelist, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2014; the National Arbitration Forum received payment on September 16, 2014.
On September 17, 2014, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <infotrax.com> domain name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. 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 September 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2014 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@infotrax.com. Also on September 17, 2014, 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.
A timely Response was received and determined to be complete on October 6, 2014.
A timely Additional Submission was received from Complainant and determined to be complete on October 13, 2014.
Respondent also submitted an Additional Submission which was received and found to be complete on October 17, 2014.
On October 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, 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" 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 claims that the INFOTRAX mark has been used since at least 1999. Complainant also has trademark rights in the mark through the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,308,251 registered Mar. 26, 2013, filed July 2, 2012). The mark was used at least as early as 1999 with computer software services. The domain name is identical to Complainant’s mark because adding “.com” does not differentiate a domain name from a mark.
Respondent has no rights or legitimate interests in the domain name. First, Respondent is not a licensee or authorized user of Complainant’s INFOTRAX mark. Respondent abandoned its INFOTRAX trademark in 2009 and ceased operating a business under that name in 1995. Further, Respondent only uses the domain name to host a website containing an image with various business terms and a promotion for “InfoTrax Full Range Marketing & Business Technology Solutions” with a notice of “New Website – Coming Soon.” There is no valid argument that the INFOTRAX mark is merely a dictionary or common term, as its only value is the value that Complainant’s marketing and sales efforts have given that word.
Complainant argues that the fact that the domain name was registered before Complainant used its mark must be weighed against Respondent’s subsequent abandonment of its trademark. Complainant cites to Denver Newspaper Agency v. Jobing.com LLC, FA 1282148 (Nat. Arb. Forum Sept. 3, 2009) for the proposition that Policy ¶ 4(a)(iii)’s required showing of bad faith “registration” need not occur at the time a domain name was acquired. Complainant notes that for over five years now the domain name has contained the same “coming soon” notice and it is unlikely any legitimate content is forthcoming.
B. Respondent
Respondent has rights and legitimate interests in continuing to control a domain name it first registered in 1995. Respondent has been commonly known by the INFOTRAX name since 1986, and the mere failure to renew the USPTO registration does not defeat the common law trademark rights that exists as a matter of continuous use of the mark in commerce. Respondent has continued to use the mark in commerce, despite the issues with the trademark registrations. A bona fide offering is made through the domain name, as the domain name is the front-end of Respondent’s software products and marketing services. Respondent does not believe that all users of Internet domain names be required to host elaborate or costly websites in order to maintain legitimate interests in those domain names, when as here Respondent is using the domain name in a way it chooses to promote its independent business.
Respondent has not acted in bad faith. The domain name was registered four years before Complainant first used its trademark. During this time, Complainant engaged in litigation with Respondent that ended in a 2001 agreement entitled a “Mutual Consent and Coexistence Agreement.” Complainant’s asserts that this is a clear case of bad faith reverse domain name hijacking.
The disputed domain name was registered by Respondent on July 26, 1995.
C. Additional Submissions
Complainant’s Additional Submission
Complainant maintains it has shown its prima facie case and that the evidence provided by Respondent does not sufficiently account for the five year gap in use of this mark. Respondent’s records as to the work Respondent claims completed by its business does not bring to mind the INFOTRAX mark as a designator of source or origin. It is hard to relate the “evidence” in Respondent’s Exhibit C as evidence of use of the <infotrax.com> domain name in a manner acceptable under the Policy because the domain name itself is not mentioned, nor is Respondent’s business mentioned in any meaningful way.
Further, the agreement pointed to by Respondent concerns only the use of the INFOTRAX mark and the registration of that mark. At no point did it touch upon Internet domain name usage.
Complainant is not engaging in bad faith reverse domain name hijacking. Complainant has a valid trademark registration in INFOTRAX, and Complainant has duly shown that Respondent does not have rights or legitimate interests in hosting an “under construction” page on the <infotrax.com> domain name for these many years. Complainant’s offer to buy the domain name is not evidence of reverse domain name hijacking because those offers came at a time when Respondent still had trademark registrations for INFOTRAX.
Respondent’s Additional Submission
Respondent can substantiate the use of the mark over the past five years by way of customer references dating to 2014. Respondent maintains that it has common law rights in the INFOTRAX mark dating back to 1986, whereas Complainant does not allege using its mark prior to 1999. Bank statements show usage of the INFOTRAX mark on Respondent’s business accounts in 2012 through 2014. Respondent further claims that its use of the domain name prior to Complainant’s first use of its alleged mark is evidence that Respondent could not have registered the disputed domain name in bad faith.
1 - The disputed domain name is identical to a trademark or service mark in which Complainant has rights.
2 - Respondent has rights or legitimate interests in respect of the domain name.
3 - The domain name was not registered nor is it being used in bad faith.
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.
Complainant claims that it has used the INFOTRAX mark since at least 1999. Complainant also has trademark rights in the mark through the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,308,251 registered Mar. 26, 2013, filed July 2, 2012). The Panel agrees that the USPTO registration can be used to date Complainant’s rights back to the July 2, 2012 filing date of its trademark. See, e.g., Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant contends that the domain name is identical to Complainant’s mark. The Panel agrees that Complainant does have rights in the INFOTRAX mark, and that the <infotrax.com> domain name is plainly identical to that mark under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
Rights or Legitimate Interests
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The Panel finds that Respondent has rights and legitimate interests in continuing to control a domain name it first registered in 1995. Respondent has been commonly known by the INFOTRAX name since 1986, and the mere failure to renew the USPTO registration does not defeat the common law trademark rights that exists as a matter of continuous use of the mark in commerce. Respondent has continued to use the mark in commerce, despite the issues with the trademark registrations. Respondent submits evidence of its continued use of the mark by way of customer references and bank statements showing use of the mark on business accounts in 2012 through 2014. Respondent maintains that it has common law rights in the INFOTRAX mark dating back to 1986, whereas Complainant does not allege using its mark prior to 1999. The Panel finds that Respondent has Policy ¶ 4(a)(ii) rights in the domain name notwithstanding its relatively inactive use.
The Panel further finds that Respondent has rights and legitimate interests in the domain name by way of using the disputed domain name with seniority vis-à-vis Complainant and its junior INFOTRAX mark. The Panel is convinced here that Respondent is indeed a senior user of INFOTRAX. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (“As the domain name was registered well before the trademarks and as it was clearly used for a legitimate purpose before the registration of the trademarks and a fortiori, before notification of the dispute, it is clear that Respondent has rights and legitimate interests in the domain name.”).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel concludes that Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), and that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
It is not disputed that Respondent registered the disputed domain name four years before Complainant first used its trademark. Also, Complainant engaged in litigation with Respondent that ended in a 2001 agreement entitled a “Mutual Consent and Coexistence Agreement.” Complainant, in its Additional Submission, does claim that this agreement extended only to Respondent’s rights in a trademark, and not Internet domain names. Nonetheless this Panel concludes that Complainant’s claim of bad faith registration is not valid. One cannot register a domain name in bad faith when, as here, the domain name existed before the INFOTRAX mark was even used by Complainant. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
Reverse Domain Name Hijacking
Complainant claims that it is not engaging in bad faith reverse domain name hijacking. Complainant has a valid trademark registration in INFOTRAX.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), and that Complainant has not engaged in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <infotrax.com> domain name REMAIN WITH THE RESPONDENT.
__________________________________________________________________
Daniel B. Banks, Jr., Panelist
Dated: October 28, 2014
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