WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intuit, Inc. v. Rocco Mancini
Case No. DBIZ2002-00216
1. The Parties
Complainant is Intuit, Inc., a corporation organized and existing under the laws of the State of Delaware, with a principle place of business at 2535 Garcia Avenue, Mountain View, California 94043, United States of America. Complainant is represented in this proceeding by Sheila Fox Morrison, Esq., Carr & Ferrel LLP, 2225 East Bayshore Road, Suite 200, Palo Alto, California 94303, United States of America.
The Respondent in this proceeding is Rocco Mancini, an individual whose address is 110 Rockland Avenue, Waterbury, Connecticut 06708, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <quicken.biz>.
The registrar for the disputed domain name is Network Solutions, Inc., 21355 Ridge Top Circle, Lakeside 3, Dulles, Virginia 20166, United States of America.
3. Procedural History
This dispute will be resolved in accordance with the provisions of the Start-up Trademark Opposition Policy for .BIZ ("STOP") adopted by NeuLevel, Inc. and approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on May 11, 2001, the Rules for Start-up Trademark Opposition Policy for .BIZ adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001 (the "STOP Rules"), and the World Intellectual Property Organization Arbitration and Mediation Center (the "Center")ís Supplemental Rules for Start-up Trademark Opposition Policy for .BIZ (the "WIPO Supplemental STOP Rules").
The Complaint was filed on April 29, 2002, by e-mail, and on May 3, 2002, in hard copy.
Respondent sent a STOP Response to the Center on May 17, 2002, by e-mail, and on May 22, 2002, in hard copy.
On May 27, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
In response to a Notice of Deficiency sent by the Center on June 20, 2002, Complainant filed an Amendment to the Complaint on June 25, 2002, by e-mail and on July 1, 2002, in hard copy, changing the domain name registrar to Network Solutions, Inc.
The Administrative Panel submitted a Declaration of Impartiality and Independence on June 24, 2002, and the Center proceeded to appoint the Panel on July 3, 2002. The Panel finds the Center has adhered to STOP, the STOP Rules and the Supplemental STOP Rules in administering this Case.
4. Factual Background
Complainant is an American company that provides financial and investment software and advice to businesses and consumers. Complainant owns three registered United States trademarks in "Quicken" (collectively referred to hereinafter as the "Complainant Trademark"). In addition, Complainant has registered and uses the domain name <quicken.com> to furnish consumers financial and investment advice.
Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on March 27, 2002.
Beginning with a telephone message from Complainant left on Respondent's answering service on April 15, 2002, Complainant and Respondent engaged in an exchange of e-mail messages and one telephone conversation until April 24, 2002. After Respondent's refusal of its earlier cost of registration plus tee-shirt offer, Complainant, in an April 24, 2002, e-mail message, offered to reimburse Respondent for those costs and grant him a Quicken Deluxe software package for the transfer of the disputed domain name. In an e-mail to Complainant of the same date, Respondent counter-offered that he would accept for the transfer $1,470 (i.e., covering the $70 registration fee plus $350 per hour for four hours of his time spent on registration and transfer of the name) and ten years of updated packages of Complainant's Quicken Deluxe and Turbo Tax software.
5. The Partiesí Contentions
- Complainant is an American company which, since 1983, has been the leader in providing financial software and web-based services to businesses and consumers. Complainant's first product, "Quicken", has become synonymous with personal financial software. Over 23 million consumers use products marked with the "Quicken" brand. "Quicken" benefits from a renown and goodwill shared by only a few brand names.
- Complainant has applied for many and owns some registered trade and service marks in many countries, including the United States, for "Quicken" (Exhibits B, C and D to the Complaint).
- Complainant has also registered the domain name, <quicken.com>, which provides consumers with assistance on investment and financial decisions.
- Respondentís domain name is identical to the Complainant Trademark. The Complainant Trademark was registered before Respondent registered the disputed domain name.
- Respondent has neither rights nor legitimate interests in the disputed domain name. Respondent has no trademark corresponding to the disputed domain name; has neither made nor planned for the use of the disputed domain name; and is not commonly known by a name similar to the disputed domain name. As evidence Complainant cites e-mail and telephone contact between Complainant and Respondent, during which Respondent claimed no trademark or similar name and indicated that he had no plans to use the disputed domain name.
- The Respondent registered the <quicken.biz> domain name in bad faith. The .BIZ registry is intended for use in business and commerce, and Respondent has no plans for such use of the disputed domain name. To transfer the disputed domain name Respondent asked for payment in cash and goods equaling about $2,270, greatly exceeding the $70 cost of registration he quoted.
- The disputed domain name is distinguished from the Complainant Trademark by the addition of ".biz" at the end.
- "Quicken" is an English word with many meanings, and Complainant's trademark does not give it exclusive use of that word.
- Respondent has not been allowed a minimum time frame of twelve months to develop a web site for the disputed domain name. Respondent intends to develop a web site to facilitate his efforts as a reseller of Quicken software.
- Respondent did not register the disputed domain name in bad faith, as evidenced by his intent to use it as a reseller of Quicken software.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name <quicken.biz> transferred to it, Complainant must prove the following (STOP, paragraphs 4(a)(i-iii)):
- the domain name is identical to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered or is being used in bad faith.
Complainant has supplied the Panel with conclusive evidence (Exhibit C to the Complaint) that Complainant owns three United States registrations of the trade or service mark "Quicken" (i.e., United States Registration Nos.: 1392176, dated May 6, 1986, for computer software programs and users; 2194009, dated October 6, 1998, for online business and financial news and advice; and 2537701, dated February 2, 2002, for a variety of shirt types and other apparel). Therefore, it is more than apparent from the record that Complainant possesses rights in that trade and service mark, and that such rights arose before Respondent's registration of the disputed domain name.
The disputed domain name <quicken.biz> is the same as Complainantís Trademark. Contrary to Respondents contention, the inclusion of the gTLD ".biz" within the disputed domain name does not negate that identity for the purposes of this proceeding, since by definition all domain names appearing under STOP proceedings will include that gTLD.
Per the foregoing and paragraph 4(a)(i) of STOP, the Panel finds that the disputed domain name is identical to a trademark or service mark in which Complainant has rights.
No Rights or Legitimate Interests
While Complainant bears the burden under STOP, paragraph 4(a)(ii), of proving that Respondent has no rights or legitimate interest in respect of the disputed domain name, by its design STOP requires that the Panel must examine the entire record in this regard.
There is nothing in the record to indicate that Respondent obtained a license, permission or consent from Complainant to use the Complainant Trademark.
Similarly, there is nothing in the record to support a finding that Respondent owns a trade or service mark identical to the disputed domain name (STOP, paragraph 4(c)(i)) or that Respondent is commonly known by the disputed domain name (STOP, paragraph 4(c)(iii)).
Respondent admits he has made no use of the disputed domain name. He contends that he registered the disputed domain name to establish a web site by which he could resell Complainant's "Quicken" software. However, other than acquiring the disputed domain name, Respondent has provided no evidence of any preparation to do so. Thus, Respondent has failed to meet the requirements of paragraph 4(c)(ii) of STOP (i.e., prior use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services (emphasis added)).
Accordingly, the Panel concludes, in view of the totality of the record, that Complainant has met its burden under STOP, paragraph 4(a)(ii), in proving that Respondent has no rights or legitimate interests in respect of the disputed domain name.
In order to prevail in this proceeding, Complainant must establish that Respondent registered the disputed domain name in bad faith. As set forth in paragraphs 4(b)(i) through 4(b)(iv) of STOP, several specific circumstances, if supported by evidence, give rise to a finding of bad faith. The first of these paragraphs instructs the Panel toward that finding if it determines that the Respondent's primary intent in registration was to transfer the disputed domain name to Complainant "for valuable consideration in excess of [his] documented out-of-pocket costs directly related to the domain name.''
In his April 24, 2002, e-mail message to Complainant (Exhibit 6 to the Complaint), Respondent asserts that his out-of-pocket costs directly related to the disputed domain name consist of a $70 registration fee. Within the same message, Respondent goes on to ask Complainant for an additional $1,400 plus ten years worth of various Complainant software products. Panels working under the Uniform Domain Name Dispute Resolution Policy (the "Policy"), have found bad faith in registrants asking for a little as $900 for the transfer of a domain name (see Prudential Ins. Co. of Am. v. TPB Fin. a/k/a B. Evans, Nat. Arb. Forum FA 105218, April 8, 2002).
The Panel notes that Complainant offered to buy the disputed domain name from Respondent before Respondent made his counter-offer. However, an earlier panel operating under the Policy discounted a similar situation in reaching a holding of bad faith registration and observed that, "[s]ince it has become commonly known that an approach to a trade mark owner to sell a domain name containing its trade mark will be taken as evidence of bad faith, it is becoming increasingly common for registrants of domain names containing trademarks to sit and wait for an approach from the trade mark owner." (Marrow v. iceT.com, WIPO Case No. D2000-1234, (November 22, 2000)).
Respondent has contended, instead, that his primary intent in registering the disputed domain name was to act as a reseller of Complainant's products. As noted above, prior to the commencement of these proceedings, he had taken no steps to further that aim. This includes the failure to initiate contact with Complainant to gain the authority to resell those products.
Based on the evidence and considerations above, the Panel concludes that Respondent's primary intent upon registration was to resell the disputed domain name for more than his direct out-of-pocket registration costs and that his registration of that name was done in bad faith.
The Panel thus finds that Complainant has carried its burden under STOP paragraph 4(a)(iii).
The Panel finds the disputed domain name, <quicken.biz>, is identical to Complainantís "Quicken" trade and service marks. The Panel also finds the Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds Respondent registered the disputed domain name in bad faith because Respondent's primary intent in registration was to transfer the disputed domain name to Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.
In accordance with paragraph 4(i) of STOP and paragraph 15 of the STOP Rules, the Panel orders that the disputed domain name, <quicken.biz>, be transferred from Respondent, Rocco Mancini, to Complainant, Intuit, Inc.
Dennis A. Foster
Dated: July 17, 2002