WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advanced Internet Technologies, Inc. v. AIT, Inc.
Case No. D2000-0597
1. The Parties
Complainant is Advanced Internet Technologies, Inc., a North Carolina corporation located in Fayetteville, North Carolina, USA.
Respondent is AIT, Inc., located in Brooklyn, New York USA.
2. The Domain Name and Registrar
The domain name at issue is "AIT.com" (the "Domain Name").
The registrar is Network Solutions, Inc., Herndon, VA.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").
Complainant submitted its complaint in this proceeding on June 13, 2000. Respondent submitted its Response on August 10, 2000.
The WIPO Arbitration and Mediation Center appointed a Panel comprised of Terrell Birch, James Dabney and Mark V.B. Partridge.
On December 11, 2000, the Panel issued Procedural Order No. 1 instructing Respondent to submit evidence to support the claims made in its Response (Appendix A). Respondent has failed to comply with the Order.
4. Factual Background
Complainant began its business operations in January 1996, and currently operates as an Internet Presence Provider (IIP), an Internet Service Provider (ISP); an ICANN accredited Domain Name Registrar, and a provider of Internet-based technology and software. Complainant is the owner of federal registrations for the mark AIT, Reg. Nos. 2,208,388 and 2,309,233.
The Domain Name was registered on March 23, 1998. When doing so, the registrant listed Complainantís servers in the application. The Domain Name is used as the address for an active web site relating to a company identified as "Advanced Information Technologies, Inc." described more fully below. Unfortunately, Respondent has failed to provide further evidence about its use of AIT.
Respondent has submitted evidence showing that many third parties have used and registered the mark AIT for services promoted on the Internet and for other goods and services.
5. Partiesí Contentions
Complainant contends that the Domain Name is confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith.
Respondent admits that the Domain is identical to Complainantís registered marks, but denies that it lacks rights or legitimate interest in the Domain Name, or that the Domain Name was registered and used in bad faith. Respondent asserts that its use of AIT predates Complainantís use, that Respondent makes bona fide use of the Domain Name, and did not know about Complainant when it obtained the Domain Name.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the Complainant to prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interest in the domain name; and
(iii) the domain name has been registered and used in bad faith.
A. Confusing Similarity
Respondent admits that the Domain Name is identical to Complainantís registered mark. Those registrations predate the registration of the Domain Name. Therefore, Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
A Respondent may demonstrate rights or legitimate interests in the disputed domain name by showing that the Respondent was commonly known by the domain name or that the Respondent used the domain name for a bona fide purpose before any notice of the dispute.
In its Response, Respondent contends that it had prior rights in AIT because it began using that mark in 1987, before Complainant began operations. The records contain no supporting evidence of this claim. As a result, the Panel issued the order attached as Appendix A calling upon Respondent to submit evidence in support of its claim. Respondent has failed to respond.
Respondent also contends that it has used the Domain Name in connection with the offering of bona fide services. Respondent asserts that it is engaged in research and development of information technology structures and has 323,000 active clients.
The only evidence of record is Respondent's web site. The site gives the name of the company as Advanced Information Technologies, Inc. and calls for a user name and password. The site also has a general information link that takes the Internet user to several pages of information about the company and its services. The site provides electronic forms for obtaining further information about the company. There is a phone number that may also be called for further information. Information on the site states that the company in privately held, was founded in 1987, began operating on the Internet in 1991, has office locations on all populated continents, and has 11,000 employees. Service information states that the companyís clients include 5, 000 large-size companies and 700,000 individuals worldwide. A copyright notice on the site states: all rights reserved © 1991-1998, Advanced Information Technologies, Inc. The site itself appears to corroborate Respondentís claim that it made bona fide use of the domain name before notice of this dispute.
Complainant contends that the web site is a sham and should not be considered bona fide use. Complainant assets that the phone number given on Respondentís site merely connects with a fax machine or a modem. No human voice is reached at that number. Complainant also asserts that Respondentís address given in the Domain Name contact information is the residential address of a person named Esther Garcia.
Respondent states that it is a corporation duly organized and existing under the laws of the State of New York and is engaged in the bona fide offering of services as described on its web site. Respondent states that it its former number incorrectly routed to a fax machine, but that it has changed its number and that it has back up numbers that may be called for information. Respondent also contends that the phone number for Ester Garcia is a business number.
Complainant, of course, has the burden of proof on this and the other elements of its claim. If Respondent were to provide any corroboration of its claim of prior use of the AIT mark or bona fide use of the Domain Name for a web site we would likely find in its favor. However, Respondent failed to respond to our invitation to present evidence clearly in its control that would support is claims. Moreover, at least some aspects of Respondentís claims appear to be false.
The New York Department of State has records for two corporations named Advanced Information Technologies, Inc. One is an inactive domestic corporation with an initial filing date of 1984, (three years before Respondent claims to have begun operations) and the other is a Tennessee corporation registered with the State of New York in 1998. Neither supports Respondentís claim that it is "a corporation duly organized and existing under the laws of the State of New York."
Respondent has also invited the Panel to call the phone numbers listed as its customer service numbers in the Response. These numbers, as Complainant claims, connect to an electronic signal that appears to be a fax or modem. They do not lead to customer service information about Respondentís business.
Finally, although Respondent asserts that it had no knowledge of Complainant when it registered the Domain Name, it apparently admits that Mr. Richard Lee, who signs the response on behalf of Respondent, was a reseller of Complainantís services prior to registration of the Domain Name. Thus, Respondentís claimed lack of knowledge appears to be false.
For these reasons, we find that Respondentís claim of rights and legitimate interests lacks credibility and that Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.
C. Bad Faith Registration and Use
Complainant has not shown that Respondent has sought to sell the Domain Name for profit, engages in a pattern of conduct to deprive others of using domain names that matches their domain names, or has deliberately sought to attract Internet users based on confusion with Complainant's mark. However, there is evidence that Respondent has sought to disrupt Complainant's business. As noted above, Complainant alleges and Respondent does not deny that Richard Lee, Respondent's representative, was a reseller of Complainantís services prior to registration of the Domain Name, indicating that he operates as a competitor of Complainant. This fact combined with the apparently false or misleading statements made by Mr. Lee in his response lead to the conclusion that Respondent is engaged in a scheme to disrupt Complainant's business by preventing Complainant from using its name and mark as a domain name. Accordingly, we find that Respondent has registered and used the domain name in bad faith.
We conclude that the Domain Name AIT.com is identical or confusingly similar to a trademark in which Complainant has rights, that Respondent lacks rights or legitimate interest in the Domain Name and that Respondent registered and used the Domain Name in bad faith. Therefore, we find in favor of Complainant and grant its request for transfer of the AIT.com Domain Name.
Mark V. B. Partridge
Dated: February 20, 2001