WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Infospace, Inc. v. Siavash Jimmy Behain, et al.

Case No. D2000-1631

 

1. The Parties

Complainant is InfoSpace, Inc., ("Complainant" or "Infospace") a corporation organized and existing under the laws of the State of Delaware, having its principal place of business in Redmond, Washington 98502 USA.

Respondent is Siavash Jimmy Behain, doing business as Behain Enterprises, also doing business as Global Net 2000, Inc. ("Behain") having an address of 11288 Ventura Blvd., Suite 341, Studio City, California 91604 USA. Behain Enterprises also has an address of 166 North Sofrevari Street, (Apadena Corner) Ė Record Building, Tehran, Tehran, 15577, Iran. Also identified as a Respondent is Nathan Joseph Knoshnood, of Johuathan Investments, Inc. having a business address of 62 Cleghorn Street, Belize City, Belize ("Knoshnood")(collectively "Respondents").

 

2. The Domain Name(s) and Registrar(s)

The domain names at issue are "nfosapce.com", "infoospce.com", "infospacer.com" and "infospacers.com" (the "Domain Names").

There are two registrars with whom the domain names were registered (collectively the "Registrars"):

"nfospace.com" and "infoospace.com"

Network Solutions, Inc. ("NSI")

505 Huntmar Park Drive

Herndon, Virginia 20170 USA; and

"infospacer.com" and "infospacers.com"

BulkRegister.com, Inc. ("BulkRegister")

7 East Redwood Street, Third Floor

Baltimore, Maryland 21202 USA.

After the Complaint was filed, both domain name registrations were transferred from NSI to BulkRegister. Additionally, ownership of the domain name "nfospace.com" was transferred from Behain to Johuathan Investments, Inc. After the transfers, the registrar with whom all four Domain Names are registered is:

BulkRegister.com, Inc. ("BulkRegister")

7 East Redwood Street, Third Floor

Baltimore, Maryland 21202 USA.

For all four of the offending Domain Names, the various registrants Siavash Jimmy Behain, Behain Enterprises, and Global Net 2000, Inc. all list the same email address as their contact address in their given Whois information: "siavashbehain@yahoo.com".

 

3. Procedural History

On November 22, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On November 27, 2000, the Center received hardcopy of the Complaint. The Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On December 19, 2000, after the Center sent a Request for Verification to the Registrars requesting verification of registration data, NSI responded that it is not the registrar of the Domain Names "nfospace.com" and "infoospace.com".

On December 20, 2000 and again on January 11, 2001, after the Center sent a Request for Verification to the Registrars requesting verification of registration data, BulkRegister confirmed, inter alia, that it is the registrar of the Domain Names and that these Domain Names are registered in the Respondentsí name.

On January 11, 2001, the Center sent a Complaint Deficiency Notice to Complainant. On January 17, 2001, the Center received an Amendment to the Complaint from Complainant via email. On January 24, 2001, the Center received the Amendment in hardcopy.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On January 29, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On February 28, 2001, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On March 15, 2001 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-member panel consisting of the Sole Panelist.

 

4. Factual Background

Complainant acquired U.S. Registration No. 2,121,439 for the mark INFOSPACE, from its predecessor in interest on August 11, 1998. That registration issued on December 16, 1997, and has a nationwide right of priority as of November 22, 1996. Complainant first used the mark INFOSPACE, in commerce, in the United States in April of 1996, establishing common law rights in the INFOSPACE mark on such date. Accordingly, Complainant's rights in and to the INFOSPACE mark predate the earliest date of registration (November 20, 1997) of the subject domain names and any rights Respondent may allege to have in such names.

Complainant has additional trademarks in POWERED BY INFOSPACE and INFO SPACE & Design, and is the owner of the registered trade name INFOSPACE, INC (collectively the "Trademarks").

Complainant's U.S. Federal and Community Trademark (CTM) registrations directed to certain of these Trademarks are listed below, including descriptions of the goods and services in connection with which the Trademarks are used:

Mark: INFOSPACE

U.S. Registration No. 2,206,397

Issued: December 1, 1998

First Use of Mark: April 1996

Goods/Services: Computer services, namely, providing search engines for obtaining data on a global computer network.

Mark: INFOSPACE

U.S. Registration No. 2,121,439

Issued: December 16, 1997

Filed: November 22, 1996

First Use of Mark: December 11, 1995 (by predecessor in interest)

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.

Mark: INFO SPACE & Design

U.S. Registration No. 2,384,606

Issued: September 12, 2000

First Use of Mark: April 16, 1996

Goods/Services: Computer services, namely, providing on-line directory services in the fields of yellow pages, white pages, personal information, classifieds, electronic shopping, public records, business services, city guides, finance, data, news groups, message boards, personal web pages, on-line auction services, e-mail, personals, on-line events, telephone services, search services, news, entertainment, international information and government information, by means of a global computer network.

Mark: INFOSPACE

Community Trademark Registration No. 539,403

Issued: February 25, 2000

Goods/Services: Computer software and hardware for use in a database and data warehouse access, queries, analysis, reporting, charting, and publishing; paper goods and printed materials; computer programming services; consulting services in the fields of computer hardware and software and databases; computer services; on-line services; and consulting, design, and software development services in the fields of data warehousing, databases, and web/database integration.

An assignment of Registration No. 2,121,439 has been made from InfoSpace, Inc. of San Mateo, California to InfoSpace, Inc. of Redmond, Washington.

Complainant's U.S. Federal applications and Community Trademark (CTM) applications directed to Complainant's INFOSPACE marks are listed below, including descriptions of the goods and/or services in connection with which the marks are or are intended to be used:

Mark: INFOSPACE

U.S. Application No. 75/816,220

Filed: October 5, 1999

First Use of Mark: Intent to Use

Goods/Services: Pens, pencils, decals and letter openers; duffel bags and umbrellas; key tags not of metal, plastic license plate holder decorative frames; mugs; clothing, namely, T-shirts, sweatshirts, vests, jackets, hats and caps; and, sports balls and stuffed toy animals.

Mark: INFOSPACE

U.S. Application No. 76/061,648

Filed: June 2, 2000

First Use of Mark: Intent to Use

Goods/Services: Computer software for use in database and data warehouse access, queries, analysis, reporting, charting, and publishing; computer software for developing web building capability for others; computer software for creating a Website store; computer software for providing a communications interface to wired and wireless communications and computer networks; computer software for permitting users to share information between wired and wireless devices; computer software for tracking product sales on wired and wireless communications and computer networks; computer software for permitting users of wired and wireless devices to access and use information on wired and wireless communications and computer networks; clothing; auctions conducted via wired and wireless communications and computer networks; advertising for others via wired and wireless communications and computer networks; display services and business merchandising; opinion polling for business or advertising purposes; promoting the goods and services of others through the administration of an incentive awards program on wired and wireless communications and computer networks; retail store services of a wide variety of goods provided via wired and wireless communications and computer networks; sales volume tracking for others on wired and wireless communications and computer networks; electronic funds transfer; electronic cash, debit, and credit transactions; financial information provided by electronic means; brokerage of electronic commerce transactions; credit card transaction processing services; debit card transaction processing services; bartering or goods and services of others; insurance consultation; providing multiple-user access to wired and wireless communications and computer networks; telephone communications services; network conferencing services; electronic mail, voice mail, text, fax and telephone message services; providing on-line electronic bulletin boards for transmission of messages among computer users; computer services, namely, providing access to information in the fields of business, directories, shopping, finance, insurance, travel, sports, entertainment, news, weather, city guides, classifieds and personal information via wired and wireless communications and computer networks; computer services, namely, providing search engines for obtaining data on wired and wireless communications and computer networks; computer services, namely, providing databases featuring information in the fields of business, directories, shopping, finance, insurance, travel, sports, entertainment, news, weather, city guides, classifieds and personal information; consulting, design, and software development services in the fields of data warehousing, databases, and web/database integration; computer services, namely, providing on-line bulletin boards for the posting of information in all fields; computer services, namely, designing and implementing web pages for others; computer services, namely, developing electronic commerce Webster for others; computer services, namely, providing on-line facilities for real-time interaction with other computer users; computer services, namely, providing on-line facilities for review of transcripts of previously recorded on-line conferences; computer services, namely, providing on-line facilities for the collection, storage, querying, and reporting of data; computer services, namely, providing electronic commerce services via wired and wireless communications and computer networks; computer services, namely, providing personal information management, calendar management, address management, community information management, group management, and communication device management on wired and wireless communications and computer networks; customer support services, namely, answering customer inquires, providing information to customers regarding the privacy policies of electronic commerce sites, and providing information to customers regarding the privacy and use of their personal and financial information; computer consulting services; testing, analysis, and evaluation of the electronic commerce Webster of others for the purposes of certification; financial consultation services; and, registration of domain names for the identification of users.

Mark: POWERED BY INFOSPACE

U.S. Application No. 75/551,293

Filed: September 10, 1998

First Use of Mark: Intent to Use

Goods/Services: Providing a Website on the global computer network featuring business information needed to conduct electronic commerce; computer services, namely, providing on-line directory services in the fields of business events, telephone information directories, discount shopping, finance, travel, sports, entertainment news, television news and weather reporting, city guides, classifieds, personal information and message exchange by means of a global computer network; and, computer services, namely, providing search engines for obtaining data on a global computer network.

Mark: INFOSPACE

Community Trademark Application No. 1,161,835

Filed: May 5, 1999

Goods/Services: Computer services, namely, providing access to information in the fields of business, directories, shopping, finance, travel, sports, entertainment, news, weather, city guides, classifieds and personal information via the global computer network; computer services, namely, providing search engines for obtaining data on the global computer network; computer services, namely, brokerage of electronic commerce transactions conducted via the global computer network.

Mark: INFOSPACE

Community Trademark Application No. 865,477

Filed: July 1, 1998

Goods/Services: Promoting the goods and services of others by preparing and placing advertisements in an electronic search engine which provides access to test, graphics, databases and audio-visual information on a global computer network and/or the Internet; providing entertainment-related content on a global computer network and/or the Internet; computer services, namely, providing search engines for obtaining data on a global computer network and/or the Internet.

Mark: POWERED BY INFOSPACE

European Community Application No. 960047

Filed: October 19, 1998

First Use of Mark: Intent to Use

Goods/Services: Computer services, namely, brokerage of electronic commerce transactions conducted via the global computer network; computer services, namely, providing access to information in the fields of business, directories, shopping, finance, travel, sports, entertainment, news, weather, city guides, classifieds and personal information via the global computer network; and, computer services, namely, providing search engines for obtaining data on the global computer network.

In addition to the Trademarks, Complainant is the registrant of the Domain Name "infospace.com".

Respondent, doing business as Global Net 2000, Inc., previously registered the Domain Name "wwwinfospace.com". Complainant became aware of this registration, and in February 2000 filed a complaint with WIPO, Case Number D2000-00070. Thereafter, Respondent agreed to transfer to Complainant the domain name "wwwinfospace.com", and Complainant paid to Respondent the cost of Respondent's registration (U.S.) $145.00.

On April 21, 2000, the parties hereto settled a previous UDRP proceeding filed by the current Complainant against Global Net 2000, Inc., regarding the domain name "wwwinfospace.com". Global Net 2000, Inc., signed a written settlement agreement via its president, who signed as "Jim Behain." Global Net 2000's president, "Jim Behain", also executed NSIís Registrant Name Change Agreement on behalf of Global Net 2000, transferring the registration of the domain name "wwwinfospace.com" to Complainant. Complainant and Respondent executed a written agreement settling their dispute. As part of that agreement, Respondent agreed:

"Ö not to register or apply for any domain name anywhere in the world through any registration organization that includes in whole or in part the term "infospace" or any confusingly similar term thereof."

Complainant became aware of the subject domain names in or about May 2000. On July 12, 2000, Complainant sent Respondent a letter by electronic mail, informing Respondent of Complainant's rights in and to the mark INFOSPACE; informing Respondent that he was in violation of the parties agreement of April 21, 2000; requesting that Respondent terminate any and all use of the subject Domain Names; requesting that Respondent transfer the subject Domain Names to Complainant; and requesting that Respondent refrain from future use of any name or mark including the term "infospace". A reply was requested from Respondent by July 19, 2000. No reply was received.

Thereafter, the counsel for Complainant left several telephone voice messages for Respondent Siavash Jimmy Behain. No reply was received.

On September 11, 2000, Complainant sent Respondent a second letter, this time by Federal Express, reiterating the requests in its July 12, 2000 letter. A reply from Respondent was requested by September 18, 2000. No reply was received.

The website "www.pointcom.com" is registered to Point Com, Inc., having an address identical to that given by Siavash Behain and Behain Enterprises: 11288 Ventura Blvd., Suite #341, Studio City, California 91604 USA.

Respondents are the record owner of Domain Names "nfospace.com" (registered on December 30, 1999), "infoospace.com" (registered on November 20, 1997), "infospacer.com" (registered on June 13, 2000), and "infospacers.com" (registered on June 13, 2000). Until November 21, 2000, the Domain Names all resolved to "www.pointcom.com" with the message "This Page Cannot be Displayed." The websites associated with all four offending Domain Names, when visited on the World Wide Web, link the user directly and seamlessly to the website "www.pointcom.com." The website "www.pointcom.com" is now a site allowing a user to search the Internet on a variety of subjects by selecting one of the many keywords listed on the "www.pointcom.com" home page. For instance, a user may search the Internet for sources of maps, for travel sites, or for information about sports, business, electronics, hobbies, gifts, health, or home improvement. Many of these services are similar or identical to services provided by Complainant on its home page, "www.infospace.com." Respondentsí "www.pointcom.com" website is in direct competition with Complainant's website.

 

5. Partiesí Contentions

A. Complainant contends that it has numerous registrations of the Trademarks. Complainant further contends that the Domain Names are identical with and confusingly similar to the Trademarks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondents have no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondents failed to contest Complainantís assertion that it has numerous registrations of the Trademarks or that the Domain Names are identical with and confusingly similar to the Trademarks.

Respondents failed to contest Complainantís assertion that Respondents have no rights or legitimate interest in the Domain Names.

Respondents failed to contest Complainantís assertion that Respondents registered and used the Domain Names in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondents are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Assignment of Domain Name

After the filing of the Complaint, the Domain Name "nfospace.com" was transferred from Behain to Johuathan Investments, Inc. in an attempt to avoid the consequences of Complainantís action. Prior panels have not condoned such efforts. In Madonna Ciccone p/k/a Madonna v. Parisi, WIPO Case No. D2000-0847, the respondent claimed it made legitimate, noncommercial use of the domain name "madonna.com" by offering to transfer the name to Madonna Hospital in Lincoln, Nebraska. The Panel declined to find fair use, noting that negotiations with the hospital began only after the respondent received the complainantís demand letter. Similarly, in Corinthians Licenciamentos Ltda. v. Sallen, WIPO Case No. D2000-0461, the Panel held that posting of biblical citations on its website did not constitute fair use, since these postings occurred only after the respondent became aware of a dispute with plaintiff.

Since Respondents transferred the Domain Name "nfospace.com" after Infospace filed the Complaint, the Sole Panelist hereby cancels the transfer of the Domain Name "nfospace.com" to Johuathan Investments, Inc. Section 8(a) of the Policy states:

You [the registrant] may not transfer your domain name registration to another holder Ö during a pending administrative proceeding Ö unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the Ö arbitrator. We reserve the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.

For purposes of this proceeding, the Sole Panelist cancels Respondentsí attempted assignment pursuant to Paragraph 8(a).

Prove Up of Elements

Even though Respondents have failed to file a Response or to contest Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must 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 legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

We must first determine whether the domain name at issue is identical or confusingly similar to a mark in which Complainant has rights. The Policy specifically directs the Panel's attention to a mark "in which the Complainant has rights," and not to a mark in which Respondent has rights. The Panel is to compare the mark and the domain name alone, independent of the use factors usually considered in a traditional infringement action. InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe's Internet Cafť, ICANN Case No. D2000-0068.

Identity or Confusing Similarity

Complainant contends that it has numerous registrations of the Trademarks. Complainant further contends that the Domain Names are identical with and confusingly similar to the Trademarks mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that it has numerous registrations of the Trademarks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the Trademarks. 15 U.S.C. ß 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its ownership of the Trademarks and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. ßß 1065 and 1115(b).

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. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047.

Respondents have not contested the assertions by Complainant that it has valid registrations of the Trademarks. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.

Complainant further contends that the Domain Names are identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Respondents have not contested the assertions by Complaint that the Domain Names are confusingly similar to the Trademarks.

The Sole Panelist notes that the entirety of the phrase "infospace" or a minor variation of that phrase is included in the Domain Names.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998).

Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000) (finding that a domain name was "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks.") Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).

Two examples of non-distinctive or descriptive material are: (1) names that involve minor alphanumeric changes and (2) names comprising translations and transliterations of trademarks or service marks.

A second level domain name is closely similar to a trademark or service mark if it is made up of identical or closely similar alphanumeric characters, in closely similar or nearly identical order. Under this standard, the second level domain names "nfospace.com", "infoospace.com", "infospacer.com", and "infospacers.com", are closely similar, if not identical, to Complainant's INFOSPACE, POWERED BY INFOSPACE and INFO SPACE & Design marks. The subject Domain Name "nfospace.com" differs from Complainant's INFOSPACE marks by excluding a single letter. The subject Domain Name "infoospace.com" differs from Complainant's INFOSPACE marks by inclusion of a single, duplicate letter. The subject Domain Names "infospacer.com" and "infospacers.com" differ from Complainant's INFOSPACE marks by inclusion of one and two additional letters, respectively. None of these minor variations is sufficient to change the appearance, sound (pronunciation) or commercial impression of the subject domain names. In such respect, they are identical to Complainant's Trademarks and Complainant's "infospace.com" domain name. Accordingly, the Sole Panelist finds that the Domain Names are confusingly similar to Complainant's Trademarks.

Respondentsí Domain Names "nfospace.com", "infoospace.com", "infospacer.com" and "infospacers.com" are also confusingly similar to Complainant's INFOSPACE mark are clearly misleading. The Domain Names suggest sponsorship by, endorsement by, or affiliation with Complainant, which does not exist and, if used by parties other than Complainant, will cause confusion.

The Domain Names are particularly confusing in that they incorporate common typographical errors: an omission of the first letter in "infospace" results in "nfospace"; a duplication of the letter "O" in "infospace" results in "infoospace"; an addition of the letter "R" to the end of "infospace" results in "infospacer"; and an addition of the letters "R" and "S" to the end of "infospace" results in "infospacers." (The latter two errors occur commonly as a result of the proximity of the letters "R" and "S" to the letter "E" on computer keyboards.)

Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the Trademarks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondents have no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Respondents have no relationship with or permission from Complainant for the use of the Trademarks.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondents have rights or a legitimate interest in the Domain Names:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Complainant alleges that Respondents have no rights or legitimate interests in the Domain Names, own no valid intellectual property rights in the Domain Names, are not commonly known by any of the Domain Names and are not making any noncommercial or fair use of the Domain Names.

Respondents have offered no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). The file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondents have no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondents registered and are using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(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 website 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 website or location or of a product

Complainant alleges that the Respondents have intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion.

Respondents have seamlessly linked the four offending Domain Names to Respondentsí "www.pointcom.com" website, a person seeking to reach Complainant's website can easily mistype "infospace.com" and reach Respondentsí "www.pointcom.com" site instead, without being aware of the mistake. Because of the broad range of services offered by Complainant, the similarity of the services offered by Respondents at "www.pointcom.com" and Complainant at "www.infospace.com", and the Complainant's numerous partnerships with various Internet service providers, that person is likely to conclude that Respondentsí site is somehow sponsored by or affiliated with Complainant, thereby causing confusion. Persons familiar with Complainant's mark INFOSPACE are likely to conclude that "www.pointcom.com" is simply an extension of Complainant's business.

Complainant is furthered harmed by Respondentsí actions because Complainant's Trademarks and its services are famous. Complainant has been using its Trademarks as a web address and domain name since as at least as early as May 28, 1996 (the day "infospace.com" was registered with NSI). The mark INFOSPACE has been used by Complainant in interstate commerce in connection with its goods and services, which span a broad range of categories, since at least as early as April 1996. The enormous volume of traffic on Complainant's site is powerful evidence of the fame of Complainant's mark: for the fourth quarter of 1999, Complainant had approximately 1.7 billion page views (including Complainant's affiliates). Complainant is one of the 20 largest web properties in the world. In the directory space, Complainant receives four (4) times as much traffic (that is, four times as many "hits") as its nearest competitor. Accordingly, Complainant's Trademarks are well known and foremost in the minds of consumers and Complainant's website is frequently accessed by consumers.

Respondents were undoubtedly aware of Complainant's mark and attendant fame when selecting the Domain Names as addresses for its "www.pointcom.com" website. The Domain Names appear to have been selected for the sole purpose of profiting from poor typing by increasing traffic (and business) at Respondentsí site. Nowhere on Respondentsí website do the Domain Names appear. The only use of the domain names is to direct consumers to Respondentsí site. The variations in spelling of the INFOSPACE mark are common typographical errors, which result in redirection of consumers to Respondentsí website, in an effort to increase traffic to Respondentsí website and profit thereby. Permitting such use will result in damage to Complainant, since Complainant has no control over the content of Respondentsí website and is likely to be affiliated with the site in the minds of consumers.

The Domain Names have been registered and are being used in bad faith. Respondents are utilizing Complainant's trademark and good business reputation to attract users to Respondentsí site. This use is expressly identified as evidence of bad faith registration and use of a domain name under Paragraph 4(b)(iv) of the Policy.

The Sole Panelist finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv) and that Respondents registered and used the Domain Names in bad faith pursuant to the Policy paragraph 4(a)(iii).

Nonexclusive Criteria

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Actual or Constructive Knowledge

One such factor found to support a finding of bad faith is Respondentsí knowledge of the Complainantís Trademarks.

Complainant's INFOSPACE mark and Internet presence are famous. Respondents also had previous dealings with Complainant concerning the "www.infospace.com" domain name. Respondentsí registration and use of the Domain Names is a direct violation of the agreement between Respondents and Complainant concerning future registration of "infospace" domain names by Respondents. Respondents, doing business as Global Net 2000, Inc., previously registered the domain name "wwwinfospace.com". Complainant became aware of this registration, and in February 2000 filed a complaint with WIPO, Case Number D2000-00070. Thereafter, Respondents agreed to transfer to Complainant the domain name "wwwinfospace.com" and Complainant paid to Respondents the cost of Respondentsí registration (U.S.) $145.00. On April 21, 2000, Complainant and Respondents executed a written agreement settling their dispute. As part of that agreement, Respondents agreed:

"Ö not to register or apply for any domain name anywhere in the world through any registration organization that includes in whole or in part the term "infospace" or any confusingly similar term thereof."

Respondentsí actions in registering the offending Domain Names in this case violate the above agreement.

Actual or constructive knowledge of the Complainantís rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000) (Respondentís knowledge of complainantís mark at the time of registration of the domain name suggests bad faith).

See, e.g., CCA Industries v. Dailey (bikinizone.com), WIPO Administrative Panel Decision in Case No. D2000-0148 (constructive notice found where domain name confusingly similar to complainantís mark and mark registered prior to respondentís domain name); Young Genius Software AB v. MWD (younggenius.com), WIPO Administrative Panel Decision in Case No. D2000-0591 (constructive notice found where complainant had trademark registration in Sweden and domain name registration under the .se top-level domain name prior to respondentís domain name registration); The Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038 (March 17, 2000) (Respondent's awareness of complainant's mark when he registering the domain name at issue supported an inference of bad faith).

Failure to Respond to Requests to Transfer

A second factor is Respondentsí refusal to voluntarily transfer the contested Domain Names. Complainant has repeatedly tried to communicate with Respondents to resolve this dispute. Respondents have not answered.

Failure to respond to a complainantís efforts to make contact provides "strong support for a determination of Ďbad faithí registration and use." Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000).

Respondents have ignored Complainantís request to transfer ownership of the Domain Names. Failure to positively respond to a complainantís efforts to make contact provides "strong support for a determination of Ďbad faithí registration and use." Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000).

The evidence establishes: (i) actual knowledge by Respondents of Complainantís rights in the Trademarks upon the registration of the Domain Names and (ii) Respondentsí failure to positively respond to Complainantís request for transfer.

Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes any transfer of the Domain Name "nfospace.com" to Johuathan Investments, Inc. is not valid. The Sole Panelist further concludes (a) that the Domain Names are confusingly similar to Complainantís registered Trademarks, (b) that Respondents have no rights or legitimate interest in the Domain Names and (c) that Respondents registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names"nfospace.com", "infoospace.com", "infospacer.com" and "infospacers.com" be transferred to Infospace, Inc.

 


 

Richard W. Page
Sole Panelist

Dated: March 30, 2001