WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Infospace.com Inc. v. Infospace Technology Co. Ltd.

Case No. D2000-0074

 

1. The Parties

The Complainant is Infospace.com Inc., a corporation organized and existing under the laws of the State of Delaware and having its principal place of business in Redmond, Washington, USA ("the Complainant").

The Respondent is Infospace Technology Co. Ltd., a company registered under the laws of Jiangsu Province and having its principal place of business in Nanjing, China ("the Respondent").

 

2. The Domain Name and Registrar

The domain name the subject of this dispute is <microinfospace.com> ("the Domain Name"), which was first registered on November 27, 1999.

The Registrar of the domain name is Network Solutions Inc. of Herndon, Virginia, USA ("the Registrar").

 

3. Procedural History

A Complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were implemented by ICANN on October 24, 1999, was received by WIPO in electronic format on February 17, 2000, and in hard copy on February 18, 2000. The latter was accompanied by payment in the required amount for a single Panelist.

On February 18, 2000:

- an Acknowledgment of Receipt (Complaint) was sent to the Complainant;

- the Complaint was checked by WIPO for compliance with the Policy, the Rules and with the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") and was verified as being satisfactory;

- a Request for Registrar Verification was sent to the Registrar, requesting confirmation that it had received a copy of the Complaint from the Complainant, that the domain name was currently registered with it and that the Policy was in effect, providing full details of the holder of the Domain Name and advising the current status of the Domain Name;

- the Registrar responded, confirming that it had received a copy of the Complaint from the Complainant and that the domain name was currently registered with it. It provided a copy of the requested Whois details and advised that the Domain Name was on "Hold" status. It stated that the Policy was in effect by virtue of Network Solutionsí 5.0 Service Agreement. The Panelist notes that clause 8 of this Agreement (http://www.networksolutions.com/legal/service-agreement.html) incorporates the Policy into the Agreement;

- the formal requirements having been met, a Notification of Complaint and Commencement of Administrative Proceeding was sent to the Respondent by email, fax and courier and also to the Complainant, the Registrar and ICANN, advising that the Response was due by March 8, 2000.

On March 4, 2000, in view of the Complainantís designation of a single panelist, WIPO invited Clive Elliott ("the Panelist") to serve as a Panelist in this Administrative Proceeding.

On March 5, 2000, a Response pursuant to the Policy and the Rules was received by WIPO in electronic format and by fax.

On March 8, 2000, an Acknowledgement of Receipt (Response) was sent to the Respondent.

On March 10, 2000, a Request for Declaration of Impartiality and Independence was transmitted to the Panelist.

On March 13, 2000, a Statement of Acceptance and Declaration of Impartiality and Independence was received by WIPO from the Panelist.

On March 14, 2000, a Notification of Appointment of Administrative Panel and Projected Decision Date ("the Appointment Notification") was sent to the Complainant and the Respondent. In accordance with the partiesí requests, the Appointment Notification informed the parties that the Administrative Panel would be comprised of a single panelist, Mr. Clive Elliott, and advised that the decision should be forwarded to WIPO by March 28, 2000.

Having reviewed the communications records the Panelist is satisfied that the formal requirements of the Administrative Proceeding have been satisfied.

 

4. Factual Background Ė Complainant

The Complaint asserted and provided evidence in support of the following, which is accepted by the Administrative Panel:

The Complainant is the registered proprietor of US trade mark registration No. 2,121,439, for the word mark INFOSPACE in class 9 in respect of computer software for use in database and data warehouse access, queries, analysis, reporting, charging, and publishing; and in class 42 in respect of consulting, design, and software development services in the fields of data warehousing, databases, and web/database integration.

The Complainant is the registered proprietor of US trade mark registration No. 2,206,397, for the word mark INFOSPACE in class 42 in respect of computer services, namely, providing search engines for obtaining data on a global computer network.

The Complainant is the applicant under US Serial No. 75/484,980 for a trade mark registration of the word mark INFOSPACE.COM, applied for in May 1998, in respect, generally, of computer services.

The Complainant is the applicant under US Serial No. 75/551,293 for a trade mark registration of the word mark POWERED BY INFOSPACE, applied for in September 1998, in respect, generally, of computer services.

The Complainant is the applicant under US Serial No. 75/567,179 for a trade mark registration of the word mark POWERED BY INFORSPACE.COM, applied for in October 1998, in respect, generally, of computer services.

The Complainant is the applicant under US Serial No. 75/506,102 for a trade mark registration of the words INFO SPACE in combination with a design, applied for in June 1998, in respect, generally, of computer services.

The Complainant is the applicant under US Serial No. 75/816,220 for a trade mark registration of the word mark INFOSPACE, applied for on October 5, 1999, in respect of pens, pencils, decals and letter openers; duffel bags and umbrellas; key tags (not of metal) and plastic license plate holders; mugs; clothing, namely, shirts, T-shirts, sweatshirts, vests, jackets, hats and caps; and sports balls and stuffed toy animals.

The Complainant is the proprietor of the domain name <infospace.com> which it first registered in May 1996, and from which it operates a very well-known and well-used directory website. This was independently verified by the Panelist by entering "infospace" as a search item in several large search engines.

The Complainant is the owner of substantial goodwill in the name INFOSPACE and the associated domain name <infospace.com>.

The Panelist notes that the Complainantís site has links to approximately 1200-1300 websites under its regional classification for China, plus a further 771 in Hong Kong. However, the Complainant has not provided evidence identifying the nature and extent of any recognition of the name INFOSPACE in China.

It is not clear whether the information hosted on the www.infospace.com site is available to Internet users in China, as it is the Panelís understanding that the Chinese government places restrictions on the information that can be accessed from within that country.

 

5. Factual Background Ė Respondent

The Respondent asserted and provided evidence in support of the following, which is accepted by the Administrative Panel:

The Respondent was registered as a company in China on October 20, 1999, offering primarily, "manufacture, development and sales of communications, computer software, design and construction of network system project" and also, "premises distribution, sales of electronic products, and technology consulting".

The Respondent also asserts:

The Respondent is a firm of professional software engineers with legitimate incomes. In support of this the Respondent annexed to its Response (Annexure C) photographs of company signage and employees of the business supposedly at work. The signage and photographs seem, on their face, to be legitimate.

The Respondent is developing urban geography information systems, or at least the land management portions thereof, for the Wuxi City and Yixin City in the Jiangsu Province in China (Annexure B). No verification is provided by the Respondent or these two bodies.

The Respondentís business is devoted to geography software. This is information regarding maps, which can be expressed by space, hence the name Infospace Technology was developed and is appropriate.

The Respondent is preparing software for its clients but this has not been completed. Copies of certain sample computer screens have been annexed (Annexure B). It is to be noted that there is no reference on these sample screens to either INFOSPACE or MICROINFOSPACE, either in English or in Chinese.

The Domain Name was selected by combining the business name with Ďmicroí, that being a Ďfashionableí term in the software industry (viz Microsoft).

While the evidence is not given under oath and cannot be tested in the more traditional manners provided under various legal systems, the Panel has to operate under the terms of the Policy and decide the matter based on the evidence now before it. In the absence of evidence or circumstances contradicting the Respondent's evidence and assertions the Panel accepts the Respondent's above evidence.

 

6. Relevant Provisions of the Policy

The relevant clauses of the Policy are clauses 4(a), 4(b) and 4(c), which are as follows:

4(a) You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

(c) How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

7. Complainantís Assertions

The Complainant asserts that the Domain Name is confusingly similar to the Complainantís trade marks, that the Domain Name is not being used legitimately, and that the Domain Name was registered and is being used in bad faith.

In support of its assertion that the Domain Name is confusingly similar to the Complainantís trade marks, the Complainant argues:

- that the dominant visual and auditory feature of each of its trade marks is the term INFOSPACE and that the addition of the word "Micro" does not alter this, the consequence being that Internet users are likely to conclude that the owner of the trade mark INFOSPACE is associated with or affiliated with any website attached to the Domain Name (the Complainant has provided case law in support of these propositions, which the Panelist does not consider it necessary to outline);

- that the Internet address infospace.com is one of the most widely recognized and heavily used addresses on the Internet and that the widespread fame of the Complainantís trade marks make it more likely that Internet users will assume the Domain Name is associated with the Complainant;

- that there is only one US trade mark that incorporates the terms "info" and "space" (whether together or separate and regardless of the order in which they appear) that does not belong to the Complainant or one of its associated companies. Accordingly the Complainantís trade mark registrations are very strong and should be granted a broad scope of protection;

- that there is a real chance that Internet users will access the Respondentís website when attempting to access the Complainantís website and that the Complainant will thereby suffer damage in the form of missed revenue.

In support of its assertion that the Domain Name is not being used legitimately, the Complainant argues:

- that the trade marks are inherently distinctive, belong to the Complainant and have acquired strong meaning to members of the public throughout the United States;

- that the Complainant has never authorized, licensed or in any way approved the use of the Domain Name to link users to the Respondentís site;

- that the Respondent has no right to use the Complainantís trade marks in this way.

In support of its assertion that the Domain Name was registered and is being used in bad faith, the Complainant argues:

- that the sole purpose of the Domain Name seems to be to "siphon Complainantís customers and to trade on the fame and goodwill of Complainantís trade marks";

- that diversion of the Complainantís customers to the Respondentís site will occur and will cause damage to the Complainant;

- that the similarity of the Domain Name to the Complainantís trade marks should result in a presumption that the Domain Name was chosen so as to attract Ďhitsí on the Respondentís site and was therefore "primarily for the purpose of disrupting the business of a competitor";

- that Internet users accessing the Respondentís Chinese language site might conclude that it reflected an extension of the Complainantís business into China and was affiliated with the Complainant;

- that the Respondentís intention in selecting the Domain Name, providing a means for collecting information regarding users and seamless connecting to a website offering goods and services similar to those offered by the Complainant was to attract Internet users to the Respondentís website for commercial gain by creating a likelihood of confusion with the Complainant or its trade marks.

On the basis of these assertions, the Complainant requests that the Administrative Panel order the transfer of the Domain Name to the Complainant.

 

8. Respondentís Assertions

The Respondent asserts:

- that the Domain Name is not identical or confusingly similar to the trade mark used by the Complainant;

- that the Respondent has a legitimate business, derived the Domain Name from the geography software developed and marketed by the business and therefore has a legitimate right to the Domain Name;

- that the Complainant trade marks are not registered in China, nor is the Complainant well-known in that country;

- that other domain names incorporating the word "infospace" are currently registered to parties other than the Complainant;

- that the Domain Name was neither registered nor has been used in bad faith and accordingly clause 4(a)(ii) of the Policy is not made out.

On the basis of these assertions, the Respondent claims that the dispute is not an Applicable Dispute under clause 4 of the Policy therefore the Administrative Panel cannot grant the Complainantís request.

 

9. Discussion and Findings

The Domain Name violates clause 4(a)(i) of the Policy in that it is identical or confusingly similar to the registered trade marks of the Complainant, incorporating as it does the Complainantís trademark INFOSPACE in its entirety.

In respect of the Respondentís contention that the Complainant has no trade mark registration in China, the Panelist notes that use of the Internet is not confined by territorial boundaries and the relevance of trade mark registrations in particular countries is accordingly of little relevance in domain name disputes, especially those relating to .com registrations.

With regard to clause 4(a)(ii) of the Policy, the timing of the registration of Infospace Technology Co. Ltd. as a company makes it difficult to determine whether the Respondent has a right or legitimate interest in respect of the Domain Name.

Prima facie, the existence of the Respondentís business and the software it produces and markets under the name INFOSPACE grant the Respondent such a right or legitimate interest. If no further factors needed to be taken into account, it would seem that the Complainant has failed to make out its case and the Administrative Panel cannot grant the Complainantís request for transfer of the Domain Name.

The factor that complicates this issue is that the registration of the Respondent occurred some three years after the Complainant registered its domain name infospace.com and began trading under that name, ie at a time when the Complainantís business and trade marks had acquired a significant reputation.

The question for the Panelist is whether the Respondentís business can be considered legitimate in light of the pre-existing company name, trade marks, domain names and reputation of the Complainant.

The Complainant contends that its trade marks are inherently distinctive and have acquired strong meaning to members of the public throughout the United States, and that the Respondent selected the Domain Name on the basis that it would attract Internet users attempting to access the Complainantís website.

The Respondent contends that the Complainant and its trade marks are not well-known in China and that the Respondent was not aware of it.

The Panelist notes that the Respondent has only two other .com domain names registered to it, <buy1234.com> and <gisbuilder.com>.

In the absence of clear evidence about the nature and extent of the awareness of the name INFOSPACE in China and the reasonably plausible explanation given by the Respondent as to why the Domain Name was chosen, the benefit of the doubt must be given to the Respondent, as the onus is on the Complainant to show that the Respondent lacked a right or legitimate interest in the Domain Name.

Accordingly, while reaching this decision is not without difficulty, on balance it is felt that the Complainant has not made out its case under clause 4(a)(ii) of the Policy and the Administrative Panel has no option but to refuse the Complainantís request for transfer of the Domain Name.

For the sake of completeness, the Panelist wishes to record its decision on the remainder of clause (4) of the Policy.

With regard to clause 4(a)(iii) of the Policy, the parties have submitted conflicting assertions as to whether the Domain Name was registered and is being used in bad faith.

The Complainant contends that the Respondentís purpose in registering the Domain Name was:

- to disrupt the business of the Complainant, in breach of clause 4(b)(iii); and

- to attract customers who were attempting to access the Complainantís site, in breach of clause 4(b)(iv).

The Respondent denies these contentions and contends that it was not aware of the Complainantís existence of trade marks when it registered the Domain Name and did not register the Domain Name with the intention of attracting the Complainantís customers.

The evidence the Complainant has filed raises an arguable likelihood that the registration of the Domain Name was in bad faith. However, the Complainant has filed no direct evidence going specifically to the issue of bad faith. In contrast, the Respondent has filed evidence touching directly on this issue.

The Panelist has to rely on the evidence filed and make a judgement on that evidence. Once again the evidence and assertions have to be taken essentially at face value and weighed as best as possible. On balance, the Respondentís evidence is sufficient to meet the Complainantís case. On this basis the Panelist feels obliged to decide in favour of the Respondent.

 

10. Decision

While the Domain Name is similar to the Complainantís trade marks, the Complainant has failed to prove that the Respondent had no right or legitimate interest in the Domain Name and has failed to prove that the Domain Name was registered and is being used in bad faith.

Accordingly the remedy requested by the Complainant is denied and the Respondent is not required to transfer the Domain Name to the Complainant.

The Panelist notes that a different outcome might be reached in a courtroom, where the likelihood of confusion can be taken into account, irrespective of the intentions of the Respondent in registering the Domain Name and where evidence can be properly tested. That issue is however outside the scope of this decision.

 


 

Clive L. Elliott
Sole Panelist

Dated: March 28, 2000