Inco-Check, Inc. v. Incocheck.com
Claim Number: FA0306000162193
Complainant is Inco-Check, Inc., Irvine, CA (“Complainant”) represented by Peter R. Afrasiabi, of Turner Green Afrasiabi & Arledge LLP. Respondent is Incocheck.com, Washington, DC (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <incocheck.com>, registered with Tucows, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 12, 2003; the Forum received a hard copy of the Complaint on June 17, 2003.
On June 13, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <incocheck.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 June 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 14, 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@ incocheck.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 <incocheck.com> domain name is identical to Complainant’s INCOCHECK mark.
2. Respondent does not have any rights or legitimate interests in the <incocheck.com> domain name.
3. Respondent registered and used the <incocheck.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Inco-Check, Inc., provides its clientele with tax, income and social security verification, as well as income tax returns and W-2 information services.
Complainant has used the INCOCHECK mark in interstate commerce in connection with its services since March of 2000. Complainant was the first to use this mark in the provisions of goods, services or business and specifically in the provision of the services offered by Complainant.
Complainant registered the <inco-check.com> domain name on October 11, 2002. The website associated with Complainant’s <inco-check.com> domain name allows customers to procure tax and social security verification, income tax returns and W-2 information.
Complainant has never licensed any person or entity to utilize the INCOCHECK mark.
Respondent registered the <incocheck.com> domain name on December 26, 2002. Respondent is using the <incocheck.com> domain name to redirect customers that are attempting to reach Complainant’s website to its own website. At the website associated with the <incocheck.com> domain name, Respondent offers the same types of services as Complainant.
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.
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.
Respondent has established common law rights in the INCOCHECK mark through continuous use in commerce since March of 2000. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <incocheck.com> domain name is identical to Complainant’s INCOCHECK mark. Respondent merely added “.com” to Complainant’s entire mark. The Panel finds that Respondent’s domain name is not sufficiently distinguishable from Complainant’s mark under Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established.
Respondent did not submit a Response in this proceeding. Thus, the Panel may accept all reasonable inferences and allegations presented in the Complaint. Furthermore, Respondent has not provided any circumstances that evidence it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a [R]esponse, it is appropriate to accept as true all allegations of the Complaint”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a [R]esponse or provided the Panel with evidence to suggest otherwise).
Nothing in the WHOIS contact information indicates that Respondent is commonly known by the <incocheck.com> domain name. Furthermore, Complainant has never authorized or licensed Respondent to use Complainant’s INCOCHECK mark. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>] domain name and its similarity to Complainant’s distinctive [MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to Respondent”).
Respondent is using the <incocheck.com> domain name to redirect Internet users to its competing website. Such use of a domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate or fair use pursuant to Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent creates a likelihood of confusion as to the source or sponsorship of its website located at the <incocheck.com> domain name when it uses Complainant’s distinct INCOCHECK in the disputed domain name to attract Internet users and then divert them to Respondent’s competing website. Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding bad faith where Respondent used the domain name <anneofgreengables.com> to link users to a website that contained information about the Anne of Green Gables literary works, motion pictures and the author, L. M. Montgomery, because a visitor to the website may believe that the owner of the mark ANNE OF GREEN GABLES is affiliated with or has sponsored or endorsed Respondent's web site).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <incocheck.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 30, 2003
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