InfoSpace, Inc. v. Michele Dinoia c/o SZK.com
Claim Number: FA0311000213574
Complainant
is InfoSpace, Inc. (“Complainant”)
represented by Gerard A. Taylor,
of Stokes Lawrence, P.S., 800 Fifth Ave., Suite 4000, Seattle,
WA 98104. Respondent is Michele Dinoia c/o SZK.com (“Respondent”)
represented by Valerio Donnini, 188
Via P. Gobetti, Pescara, PE, Italy.
The
domain name at issue is <wwwauthorize.net>,
registered with Onlinenic, 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.
M. Kelly Tillery, Esquire as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 20, 2003; the Forum received a hard copy of the
Complaint on November 24, 2003.
On November 23, 2003, Onlinenic, Inc.
confirmed by e-mail to the Forum that the domain name <wwwauthorize.net> is registered with Onlinenic, Inc. and
that Respondent is the current registrant of the name. Onlinenic, Inc. has
verified that Respondent is bound by the Onlinenic, 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
December 30, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 19, 2004 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@wwwauthorize.net by e-mail.
A
timely Response was received and determined to be complete on January 16, 2004.
A
timely Additional Submission was received from Complainant and was determined
to be complete on January 16, 2004.
An
untimely Additional Submission was received from Respondent on January 23,
2004.
On January 26, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed M. Kelly
Tillery, Esquire as Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant
Complainant
contends that:
1. it is a global provider of wireless
and Internet software and application services to the leading wireless and
broadband providers, websites and merchant resellers providing directory
services, offering access to information about various subjects via the
Internet, search engines for obtaining data on the Internet, and for brokerage
of electronic commerce transactions conducted via the Internet;
2. it
and its predecessor in interest, Go2Net, Inc., have been using a family of
marks that each incorporate the AUTHORIZE.NET designation since at least as
early as November 1996, in connection with their services in the U.S. and
worldwide;
3.
it has
invested substantial resources and several millions of dollars in
promoting its services in connection with
said marks;
4. as
a result of its extensive use, advertising and promotional efforts, its AUTHORIZE.NET
marks are well‑known and are recognized by consumers around the world as
signifying and representing services;
5. it
is the owner of the following United States Trademark Registrations:
|
Mark |
Registration
No. |
International Class(es) |
First Use
|
Goods/Services
|
|
AUTHORIZE.NET |
2,422,317 |
009. 036 |
November 1996 |
Computer software for use in electronic authorization, processing and
management of credit card and electronic check transactions conducted via a global computer
network, in Class 009. Global financial services in the nature of electronic
authorization, processing, and management of credit card and electronic check transactions via a global computer network, in
Class 036. |
|
AUTHORIZE.NET |
2,749,994 |
036 |
November 1996 |
Financial services in the nature of electronic
authorization, processing, and management of credit card and electronic check
transactions via a global computer network. |
|
AUTHORIZE.NET WHERE THE WORLD DOES BUSINESS ON THE WEB & Design |
2,441,859 |
009, 036 |
November 1996 |
Computer software for use in electronic
authorization, processing and management of credit card and electronic check
transactions conducted via a global computer network, in Class 009. Global
financial services in the nature of electronic authorization, processing, and
management of credit card and electronic check transactions via a global
computer network, in Class 036. |
|
Mark |
Registration
No. |
International Class(es) |
First Use
|
Goods/Services
|
|
AIRPAY BY AUTHORIZE.NET |
2,746,969 |
009, 036 |
July 21, 2001 |
computer software for facilitating financial
transactions in the fields of electronic payments and electronic software
sales that may be downloaded from wireless and global computer networks,
including the internet, in Class 009. Processing and transmission of
electronic payments and payment information via wireless and global
communication networks, including the internet, in Class 036. |
|
POCKET AUTHORIZENET |
2,685,523 |
009, 036 |
December 17, 2000 |
Computer software, namely, a software
application for use with electronic authorization, processing, and management
of credit card transactions via telephone and global communication networks,
including the internet, in Class 009. Global financial services in the nature
of electronic authorization, processing, and management of credit card
transactions via telephone and global communication networks, including the
internet, in Class 036. |
6. it also offers these services and
software via its Internet websites located at the domain names <authorize.net> and <authorizenet.com>;
7. Respondent has registered the domain
name <wwwauthorize.net>, which is substantially identical
and/or confusingly similar to Complainant's marks and domain names.
8. Respondents addition of
"www" does not materially change the commercial impression of the
domain name;
9. the term "AUTHORIZE.NET"
has no common meaning in the Internet context other than as an indicator of the
source of Complainant's services;
10. Respondent registered the <wwwauthorize.net> domain name on June 21,
2003, more than six
years after Complainant began using its mark and domain names;
11.
Respondent has never been known by or operated a
business under the
AUTHORIZE.NET mark or <wwwauthorize.net> name and has no trademark or service
mark rights in the terms;
12.
Respondent has no relationship to Complainant
and is not authorized to use the
mark or any variations
thereof;
13. Respondent
selected the <wwwauthorize.net> for purposes of generating
business to its
company and diverting traffic to a commercial website by capitalizing on the
public's familiarity of Complainant's well‑known mark;
14. Respondent
is using the disputed domain name to redirect Internet users to a
website that is
unrelated to Complainant's mark;
15. Respondent has registered a domain
name substantially identical and confusingly similar to Complainant’s mark to
divert Internet traffic to an Italian language website that has absolutely no
connection to Complainant, nor Complainant's registered mark;
16. there is no indication that
Respondent has ever been known by the AUTHORIZE.NET mark or <wwwauthorize.net>.
B. Respondent
Respondent
contends that:
1.
Complainant’s
mark is based on a common descriptive term;
2. the individual terms of
Complainant’s asserted mark are at best descriptive, and hence unprotectible
without proof of acquired distinctiveness or secondary meaning;
3. Complainant’s only evidence on the
issue of acquired distinctiveness or secondary meaning is in the nature of
product reviews or websites offering Complainant’s products for sale;
4. there
is no evidence (or allegation) of any special association of the mark with
Complainant’s business, no evidence (or allegation) of any investment in the
mark by way of use or advertising, no evidence (or allegation) of the value of
the business conducted under the mark, and no evidence (or allegation) that
Respondent or the Domain Name has diverted customers from Complainant;
5. Complainant has provided no
evidence to support its assertion that <authorize.net> has become distinctive of Complainant or of
its goods or services;
6. the
contested domain name is not confusingly similar to Complainant’s mark, as the
existence of the prefix “www” is sufficient to an Internet customer to be aware
of the fact that Respondent’s site has no connection with the Complainant;
7. Respondent is the CEO of an Italian
company named Piazza Affari, Srl, which has operated barter trade in Italy
since 2001;
8. Respondent’s company is not a
competitor to Complainant and it uses the domain name - <wwwauthorize.net>
- to redirect its clients to the home page of its main website,
<piazzaaffari.com>;
9. the domain name was chosen because
of the word “authorize,” that is the keyword used by Respondent’s company and
its clients in the exchange of goods and services in barter exchange which must
have an authorization (i.e. the “authorize” order) from Respondent’s
company, as well as from the goods or services supplier, to be completed;
10. Respondent has been using the domain
name for its business, which is not run in concurrence to Complainant; such use
of the domain name, which started well before the commencement or even before
any notice of this dispute, is actually made in connection with a bona fide offering of services to
Respondent’s clients, without intention to tarnish the trademark or to
misleadingly divert consumers;
11. Respondent was and is using the
domain name in connection with a bona
fide offering of a service to
clients;
12. Respondent has a demonstrable
legitimate interest in the disputed domain name, for its business model,
because the domain name is comprised of generic terms that are legitimately
open for registration as domain names on a first come, first served basis;
13. Consumers,
who see Respondent’s site, are not likely to believe that the site has any
connection with Complainant;
14. Respondent
has no intent to divert consumers or to tarnish the trademark at issue that it
cannot be considered as a competitor to Complainant, which does not direct its
business to the Italian market;
15. the
contested domain name was registered in good faith by Respondent and there is no
direct evidence that Respondent, living in Italy, was aware of Complainant or
its mark, which was registered only in the USA at the time Respondent registered
the Domain Name;
16. there
is no evidence in the record that Respondent had actual notice of Complainant’s
mark;
17. the
filing of the Complaint constitutes an effort to obtain <wwwauthorize.net>
from a legitimate good faith registrant and is an attempt to acquire by
administrative action what it simply is not entitled to. In fact, although Complainant’s counsel was
made aware of the use of the domain name and of Respondent’s business it filed
the Complaint; this conduct is likely to be a pattern of reverse domain name
hijacking, since no reason or evidence was brought by Complainant to justify
that behavior.
C. Additional Submissions
Complainant
filed a timely Additional Submission on January 16, 2004 repeating many of the
arguments made in the Complaint and adding some additional legal citation
regarding typosquatting.
Respondent
filed an Additional Submission after the deadline for submissions. Same will not be considered.
1. Complainant has met its burden to
prove by a preponderance of the credible, relevant, admissible evidence that
Respondent’s domain name is confusingly similar to a mark in which Complainant
has rights. Policy ¶ 4(a)(i).
2. Complainant has not met its burden
to prove by a preponderance of the credible, relevant, admissible evidence that
Respondent has no rights or legitimate interest in respect to the domain name.
Policy ¶ 4(a)(ii).
3. Complainant
has not met its burden to prove by a preponderance of the credible,
relevant, admissible evidence that Respondent’s domain name has been registered
and is being used in bad faith. Policy ¶ 4(a)(iii).
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 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.
Respondent
does not dispute that Complainant owns at least two (2) valid/live U.S. Patent
and Trademark Office registrations for the mark AUTHORIZE.NET as well as three
other U.S. Patent and Trademark Office registrations for “authorize.net”
related marks. Respondent merely claims
that these marks are generic or at best descriptive and Complainant has submitted
no evidence to establish acquired distinctiveness or secondary meaning. The U.S. Patent and Trademark Office
Certificate of Registrations are prima
facie evidence of trademark rights and therefore this Panel finds that
Complainant does have trademark rights in and to the mark AUTHORIZE.NET. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent has not produced sufficient
evidence and/or authority to support any finding that the mark is generic.
The <wwwauthorize.net> domain name, while
not identical to the AUTHORIZE.NET mark, is certainly confusingly similar
thereto since the “www” prefix is an abbreviation for the “World Wide Web” and
such prefixes are regularly dismissed in such an analysis as well as by the
Internet consumer when reviewing same. See
Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding
that the letters "www" are not distinct in the "Internet
world" and thus Respondent 's <wwwmarieclaire.com> domain name is
confusingly similar to Complainant's MARIE CLAIRE trademark); see also Neiman
Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002)
(holding confusing similarity has been established because the prefix
"www" does not sufficiently differentiate the <wwwneimanmarcus.com>
domain name from Complainant's NEIMAN-MARCUS mark).
Under these circumstances, Complainant
has met its burden to prove by a preponderance of the credible, relevant and
admissible evidence that Respondent’s domain name is identical or confusingly
similar to a mark in which Complainant has rights. Policy ¶ 4(a)(i).
Respondent
has established that before any notice to it of this dispute, it actually used
the domain name in connection with a bona fide offering of goods or services. Under these circumstances, Complainant has
not met its burden to prove by a preponderance of the credible, relevant and
admissible evidence that Respondent has no rights or legitimate interest in
respect to the domain name. Policy ¶
4(a)(ii). See Lush LTD v. Lush
Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when
Respondent does file a Response, Complainant must allege facts, which if true,
would establish that Respondent does not have any rights or legitimate
interests in the disputed domain name); see also Graman USA Inc. v.
Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that absent a showing of any facts by Complainant that establish
Respondent lacks rights or legitimate interests in the disputed domain name,
the Panel may decline to transfer the disputed domain name); see also Bankinter S.A. v. BI Fin. Inc.,
D2000-0460 (WIPO Sept. 5, 2000) (stating that “[b]y September 1999, when first
approached by the Complainant, the Respondent or its predecessors had used the
<bankinternet.com> website for almost 4 years, thus demonstrating "a
bona fide offering of goods and services").
Respondent
has established that it is a legitimate business and has been using the domain
name substantially prior to being put on notice of this dispute. Complainant has not established that
Respondent registered the domain name or is using it in bad faith. Complainant has established none of the
possible scenarios set forth in Policy ¶ 4(b)(iv). See Energy Source
Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001)
(finding that Respondent successfully rebutted Complainant’s averments that it
registered and used the domain name at issue in bad faith and that Complainant
produced no credible evidence of bad faith on the part of Respondent); see
also DJF Assocs., Inc. v. AIB
Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent
has shown that it has a legitimate interest in the domain name because
Respondent selected the name in good faith for its website, and was offering
services under the domain name prior to the initiation of the dispute).
Under all of these circumstances,
Complainant has not met is burden to prove by a preponderance of the credible,
relevant and admissible evidence that Respondent’s domain name was registered
and used in bad faith. Policy ¶
4(a)(iii).
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that the relief requested shall be DENIED.
M. KELLY
TILLERY, ESQUIRE, Panelist
Philadelphia,
PA
Dated: February 15, 2004
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