WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
InfoSpace.com, Inc. v. Hari Prakash
Case No. D2000-0076
1. The Parties
The Complainant is InfoSpace.com, Inc., a corporation organized and existing under the laws of the State of Delaware, having its principal place of business in Redmond, Washington, United States of America ("the Complainant"). The Complainant is represented by Bruce E. O'Connor, Esq. and by Daiva K. Tautvydas, Esq., of Seattle, Washington, United States of America.
The Respondent is Hari Prakash, doing business in Omega Complex, Anand nagar, Raisen Road, BHOPAL, MP 462021, India ("the Respondent").
2. The Domain Name and Registrar
The domain name at issue is INDIAINFOSPACE.COM, registered with Network Solutions, Inc., of Herndon, Virginia, United States of America ("the Registrar").
3. Procedural History
On February 16, 2000 the Complainant sent to the WIPO Center, via Federal Express, a Complaint with exhibits and the required payment to cover the filing fee. A copy thereof with exhibits and the Complaint Transmittal Coversheet was sent to the Respondent via Federal Express. On the same day the Complaint was also sent to the WIPO Center and the Respondent by e-mail without exhibits. The Complaint was received by the WIPO Center on February 17, 2000.
On February 21, 2000 the Center sent to the Registrar a request for confirmation that the Registrar had received a copy of the Complaint, that the domain name "Indiainfospace.com" was registered with the Registrar, that the Respondent is the current registrant thereof, and asked further the Registrar to provide full contact details available in the Registrarīs WHOIS database for the domain name registrant, as well as technical, administrative and billing contacts. The Center further requested the Registrar to confirm that the ICANN Uniform Domain Name Dispute Resolution Policy is in effect, and to indicate the current status of the domain name.
On the same day the WIPO Center sent by e-mail an Acknowledgement of Receipt of the Complaint to the Complainant. The Center assigned Mr. Erik Wilbers to serve as the Case Manager.
On February 22, 2000 the Registrar sent to the WIPO Center an email confirming that it had received the Complaint from the Complainant; that Network Solutions is the Registrar of the domain name registration; that PRAKASH, HARI at Omega Complex, Anand nagar, Raisen Road BHOPAL, MP 462021 INDIA is the current registrant of the "INDIAINFOSPACE.COM " registration; that the administrative and billing contact is PRAKASH, HARI being hari_prakash@VSNL.COM his e-mail address, with phone number 0091-755 758777 and fax number 0091 755 756957. The technical and Zone contact is WorldNIC Name Host with e-mail at namehost@WORLNIC.COM with phone number 1-888-642-9675. The Registrar confirms that its 5.0 Service Agreement is in effect, and indicates that the domain name registration is on "Hold" status.
On February 25, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding in Case No. D2000-0076 to Mr. Bruce E. OīConnor, Esq., (Attorney for the Complainant) by e-mail, to Hari Prakash, Omega Complex, Anand nagar, Raisen Road, Bhopal, MP 462021, India by courier, to the same person via facsimile at +91 755756957 and to Hari_prakash@vsnl.com, Namehost@worldnic.net and Postmaster@indiainfospace.com. A copy thereof was also sent by e-mail to ICANN and the Registrar. In this communication the Center verified the Complaintīs compliance with formal requirements as provided in the Policy, Rules and WIPO Supplemental Rules, and that payment in the required amount had been made by the Complainant. The Center established March 15, 2000 as deadline for the submission of a Response to the WIPO Center and the Complainant.
The Notification of Complaint included following paragraph:
"6. Default. If your Response is not sent by the above date or we have not received any required payment from you by that date, you will be considered in default. We will still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so and, as provided for by Rules, Paragraph 14, may draw such inferences from your default as it considers appropriate. There are other consequences of a default, including no obligation on our part to consider any designations you have made concerning the appointment of the Administrative Panel or to observe any guidelines you have provided concerning case-related communications."
On February 28, 2000 the fax machine of the WIPO Center issued a report of successful transmission of 25 pages sent to "0091755756957".
On February 26 and March 1, 2000 the WIPO Center received two e-mails by Mail Service Subsystem MAIL-DAEMON@unicc.org in respect of the message sent to firstname.lastname@example.org. The first e-mail informs that the address has had transient non-fatal errors, that message is still undelivered after 14 hours and that they will keep trying until l message is 5 days old. The second e-mail informs about permanent fatal errors, that message could not be delivered for 5 days , and that the message will be deleted from queue.
In its Complaint, the Complainant had expressed the wish that the present dispute be resolved by a sole panelist. On March 17, 2000 the WIPO Center decided to invite Roberto A. Bianchi to serve as a panelist.
On March 23, 2000 the Center sent to the Respondent by e-mail to Hari_prakash@vsnl.com a Notification of Respondent Default.
After having received Roberto A. Bianchiīs Statement of Acceptance and Declaration of Impartiality and Independence, on March 24, 2000 the Center appointed him as a Sole Panelist. Thus, the Administrative Panel finds that it has been properly constituted.
On March 24, 2000 the WIPO Center sent a Notification of Appointment of Administrative Panel and Projected Decision Date to following addressees: Hari_prakash@vsnl.com; Oconnor@cojk.com; with copy to Rabianchi@ciudad.com.ar. It was also notified to the Respondent via facsimile. It was notified that the appointed Administrative Panel is Mr. Roberto Bianchi, and that the date scheduled for the issuance of the Panelīs decision was April 6, 2000.
The Panel sharing the assessment of the Center, independently finds that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, and that payment of the fees was properly made. The Panel finds that the Center has discharged its responsibilities at trying to notify the Complaint to the Respondent pursuant to Rules, paragraph 2(a), and that the Notification of Respondent Default was also properly notified.
There were no extensions granted nor orders issued.
The registration agreement for the domain name at issue has been done and executed in English by Respondent-Registrant Hari Prakash and the Registrar. The Complainant has submitted its Complaint without any observation. Seeing the Panel no special circumstances to determine otherwise, as provided in Rule paragraph 11, the language of this proceeding is English.
4. Factual Background
4.1. Trademark registrations
The Complainant is the owner of the following U.S. trademark registrations:
INFOSPACE, Registration No. 2,121,439, filed November 22, 1996 and registered December 16, 1997 covering following goods/services: Computer software for use in database and data warehouse access, queries, analysis, reporting, charting, and publishing; and consulting, design, and software development services in the fields of data warehousing, databases, and web/database integration, and
INFOSPACE, Registration No. 2,206,397, filed November 4, 1996 and registered December 1, 1998, covering following goods/services: Computer services, namely, providing search engines for obtaining data on a global computer network.
Complaint-Exhibits "C" and D".
The Complainant is the owner of the Internet domain name "infospace.com". Complaint-Exhibit "H".
4.2. Domain Name "indiainfospace.com"
The domain name at issue is "indiainfospace.com", which is registered with Network Solutions Inc. by the Respondent. See 3 above.
5. Parties Contentions
5.1.1. The Complainant contends that the domain name at issue is confusingly similar to the Complainantīs trademarks. The dominant element of each of the Complainantīs trademarks is the term "INFOSPACE". The Respondentīs domain name is confusingly similar in that it simply adds the word "India". The connotation of the Respondentīs domain name is merely a geographical variation of the Complainantīs trademarks. The enormous volume of traffic on the Complainantīs site is powerful evidence of the fame of the Complainantīs mark. The domain name and Internet address InfoSpace.com is one of the most widely recognized and heavily used addresses of the Internet. The subject domain name is almost identical in sound, appearance and meaning to the Complainantīs trademark. There is and has been no indication on the Respondentīs site that it is not "InfoSpace.com, Inc.", or in any way connected therewith, and that anyone seeking the real "InfoSpace" is not at the correct web location. The confusion that the Respondentīs site creates is not merely potential, it is actual. Every time a single user is confused by attempting to access the Complainantīs web site, the Complainant suffers damage in the form of lost revenues for its services and goods not purchased, and loss of its reputation and good will. Complaint V, D, 2.
5.1.2. The Complainantīs further contends that the Respondent should be considered to have no rights or legitimate interests with respect to the subject domain name. The Complainant has never authorized, licensed or in any way authorized the Respondentīs use, and the Respondent has no relationship or history of any relationship to the Complainant. Complaint, V, D, 3.
5.1.3. The Complainant asserts that the domain name at issue has been registered and is being used in bad faith. The sole purpose of "indiainfospace.com" seems to be to confuse the Complainantīs customers and to trade on the fame and good will of the Complainantīs trademarks. Although the site was registered more than to months prior to the filing of the complaint, no meaningful content has yet appeared on the site. The Respondent has not indicated on its site that it was not affiliated with or related to the Complainant. The domain name holder is attempting to attract Internet users to its web site. This attraction is done by creating a likelihood of confusion. Any user who uses a search engine to find "InfoSpace" will be given a link to the Respondentīs site. The Respondentīs site, although "under construction", is established for commercial gain. The Respondentīs site bears the top level domain name .com, which is for commercial use. Complaint, V, D, 4.
5.1.4. Finally, the Complainant requests the transfer of the domain name at issue to the Complainant. Complaint, VI.
The Respondent has not submitted a response, is therefore in default and, after the Notification of Respondent Default, has not made any submissions whatsoever.
6. Discussion and Findings
6.1. Effects of Respondent Default
The specific allegations and contentions of the Complainant against the domain name registration bound the Respondent to respond specifically. According with Rules paragraph 5(b)(i) "(t)he response shall (...) (r)espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (...)".
In case of a default, under Rules paragraph 14 (a), the Panel "shall proceed to a decision on the complaint", and under paragraph 14(b) the Panel " shall draw such inferences therefrom as it considers appropriate".Thus, the Respondentīs default would indicate that the Complainantīs assertions are sufficient ground for the Panel to proceed to a default decision in its favour. However such automatic consequence is qualified under the Policy, because "the complainant must prove that each of these three elements are present". Policy, paragraph 4(a) in fine.
6.2. Independent Connection with the Respondentīs Web Site
Paragraph 10(a) of the Rules reads:
"10. General Powers of the Panel
(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules."
The Panel considers that the powers thereunder allow the Panel to independently visit the Internet in order to obtain additional light in this default proceeding..
On April 1st, 2000 the Panel visited the www.indiainfospace.com web site of the Respondent. The connection resulted in a screen whose hard copy reads in its entirety:
"INDIAINFOSPACE.COM. WELCOME TO INDIAINFOSPACE.
WE WILL PROVIDE YOU A WORLD OF INFORMATION FOR YOUR BUSINESS NEEDS. THE ONE STOP FOR ALL FUTURE B2B AS WELL AS B2C E-COMMERCE. WE ARE CURRENTLY UNDER CONSTRUCTION. PLEASE VISIT US IN A FEW DAYS TIME.
WE APPRECIATE YOUR PATIENCE. AND LOOK FORWARD TO SERVING YOUR NEEDS......
Hari Prakash 0091 755 758777 0091 755 756957
Omega complex, Anand nagar,
Raisen Road Bhopal Madhya Pradesh 462021
INDIA 0091 755 758777 0091 755 756957
TAKING IT TO NEW FRONTIERS".No other screen was available at the Respondentīs web site. The Panel notes that his visit produced a slightly different result from that represented in the Complaint, in that only an English-speaking public appears to be aimed at, instead of the multilingual audience referred to in the Complaint at V, D, 1.
6.3. Identity or Confusing Similarity
The Panel has considered the allegations by the Complainant as to the confusion of the domain name at issue with the Complainantīs trademarks (See 5.1.1. above).
The Panel has compared the domain name at issue with the Complainantīs trademarks INFOSPACE in their entireties, and concludes that the mere addition of the word "India" at the front of the Respondentīs domain name is not sufficient to distinguish it from the trademarks of the Complainant. The Panel notes that such addition appears to be made most likely with a intent to induce Internet users to believe that they are connecting their computers with a site pertaining to an Indian affiliate of the Complainant, or to some kind of "Indian operation" of the Complainant.
The Panel finds therefore that the domain name at issue is confusingly similar to the Complainant trademarks.
6.4. Rights and Legitimate Interests in the Domain Name.
The Complainant has asserted that no relationship to the Respondent exists or ever existed, and that the Respondent is not a licensee of the Complainant. See 5.1.2. above.
The Panel considers that this uncontested assertion is a sufficient showing that the Respondent has no rights to the domain name. This consequence of the Respondentīs default is further confirmed by the visit independently conducted by the Panel to the Respondentīs web site. The site makes no reference to any pre-existent company or business of the Respondent that could, if asserted by the Respondent in this proceeding, reasonably be a base for such rights to the domain name. See 6.2. above.
It must be noted that on March 28, 2000 an Administrative Panel - Mr. Clive L. Elliott being the Sole Panelist - has issued a decision in a challenge brought by the same complainant against a domain name registration allegedly similar to the complainantīs trademarks. See WIPO Case D2000-0074 Infospace.com, Inc. v. Infospace Technology Co. Ltd., published at http://www.wipo.int/amc/en/domains/decisions/word/d2000-0074.doc, being "microinfospace.com" the domain name at issue.
In that case the Chinese respondent asserted that it has a legitimate business, that it derived its domain name from the geography software developed and marketed by the business, and that therefore it has a legitimate right to the domain name. The respondent in that case further asserted that the complainantīs trademarks were not registered in China, nor was the complainant well-known in that country. Idem, at page 7. The Panel then considered that "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". Idem, at page 9.
In the present default proceeding there is no contention on record in favour of the Respondent, and particularly that it might have rights to or legitimate interests in the domain name. No circumstance has been evidenced that could reasonably support such an inference pursuant to the Policy, paragraph 4(c).
Additionally the result of the connection independently conducted by the Panel did not show any evidence as to the legitimacy of the interests of the Respondent in the domain name. See 6.2. above.
Therefore, the Panel finds that the Respondent has no rights to or legitimate interests in the domain name at issue.
6.5. Registration and Use in Bad Faith.
The Panel will now consider the Complainantīs allegations referred to under 5.1.3. above.
6.5.1. Registration in Bad Faith.
Under the Policy, paragraph 4(b)(i), the registration of 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 the registrant has engaged in a pattern of such conduct, is an evidence of bad faith.
However the domain name is not identical, but confusingly similar to the Complainantīs marks. In effect the Complainant, having registered the domain name "infospace.com" has already succeeded in reflecting its trademarks in a corresponding identical - domain name prior to the Respondentīs registration of the domain name at issue. This excludes the circumstance of Policy, paragraph 4(b)(i).
Nor there is on record an evidence of a registration with an intent to take profit from a transfer or assignment of rights in the domain name. This excludes the circumstance of Policy, paragraph 4(b)(ii).
The Complainant asserts that "the sole purpose of īindiainfospace.comī seems to be to confuse Complainantsīs customers and to trade on the fame and good will of Complainantīs trademarks". Complaint, V, D, 4. As the Respondent is in default there has been no showing on record that the "infospace" portion of the domain name at issue could reasonably be understood as meaning something different from the trademarks of the Complainant. The Panel finds that the assertion of the Complainant in this respect is true.
According with the Policy, paragraph 4(b)(iii), there is bad faith registration when "you have registered the domain name primarily for the purpose of disrupting the business of a competitor".
The Complainant has contended that it is
"a leading provider of content services for syndication to a broad network of affiliates, including existing and emerging Internet portals, destination sites, and suppliers of personal computers and other Internet access devices. InfoSpace provides content with broad appeal, such as yellow pages and white pages directory services, maps, classified advertisements, real-time stock quotations, information on local businesses and events, weather forecasts, and horoscopes. A representative list of the goods and services with which the INFOSPACE mark and second-level domain name are used can be found in the attached registrations and the applications listed above."
Complaint IV, C.
There is no element on record showing that the Respondent and the Complainant were strictly competing with each other at the moment of the registration. However, a situation of open competition could eventually exist should the Respondent develop its activities in the future. The Respondent is in default and gave thus no clue as to the nature of all its present and future activities under the top level domain ".com", except to the extent of its declared intentions on its web site.
The Panelīs independent connection referred to under 6.2 above shows that the activities promised by the Respondent to Internet users include the provision of "a world of information for business needs". The site is also presenting itself as being "the one stop for all future B2B as well as B2C e-commerce".
The Panel notes that the Respondentīs envisaged field of business - as represented on its web site - is apparently related to the Complainantīs activities. Both are most likely are competing activities. As the Respondent is in default, and no other purpose of the registration exists on record except the vague representations on the Respondentīs web site, the Panel considers that the registration of a confusingly similar domain name was intended primarily to disrupt the business of the Complainant.
That circumstance would reasonably fall within the description of bad faith registration under the Policy paragraph 4(b)(iii) if it were established that the Complainant and the Respondent are in fact competitors. To clarify this issue the Panels has to refer to the assertion of Complainant, that "Respondentīs actions constitute an act of unfair competition against Complainant". Complaint, V, D, 4.
The Panel, absent a defense by the Respondent, by its default, finds that the Complainantīs assertion is true, that the Complainant and the Respondent are competitors, and that the circumstance of bad faith registration described in the Policy paragraph 4(b)(iii) is present in this case.
For these reasons the Panel finds that the domain name at issue has been registered in bad faith.
6.5.2. Use in Bad Faith
This Panel has considered in an earlier case that sufficient use exists as required in the Policy, paragraphs 4(a)(iii) and 4(b)(iv) - where the respondent had uploaded and was keeping a mere tombstone in active status. WIPO Case D2000-0025 Société Générale de Surveillance S..A. v. Inspectorate, paragraph 220.127.116.11, http://www.wipo.int/amc/en/domains/decisions/word/d2000-0025.doc at page 15.
The Panel arrives at the same conclusion in this present case where the Respondent has uploaded and is keeping a site "under construction" in active status with the text seen under 6.2. above.
The Panel considers such web publication an intentional attempt to attract, for commercial gain, Internet users to the Respondentīs web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondentīs web site. See Policy paragraph 4(b)(iv).
The fact that the Respondent is presenting itself as an information provider for "your business needs" and as "a one stop business-to-business and business-to-consumer e-commerce" is causing or increasing a likelihood of confusion with the competing field of business of the Complainant. See 6.5.1. above. The confusion is almost certain because visitors are not warned that the site is not associated, affiliated or related to the Complainantīs trademarks, domain name or activities in the Internet.
The purpose of commercial gain can reasonably be established from these facts: The Respondent is operating its site from a ".com" top level domain name, and is addressing its message to "business needs" and "e-business", which further indicates a commercial purpose.
These reasons are sufficient for the Panel to find in this default proceeding that the Respondentīs use of the domain name is and has been in bad faith.
The Panel has found that the domain name indiainfospace.com is confusingly similar to the trademarks of the Complainant, and that the Respondent has no rights to or legitimate interests in said domain name. The Panel has further found that the domain name has been registered in bad faith, and that it has been and is being used in bad faith.
Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel decides to request that the domain name indiainfospace.com be transferred to the Complainant InfoSpace.com, Inc.
Roberto A. Bianchi
Date: April 6, 2000