WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Registered Agents, Ltd. v. Ali Qureshi Pvt
Case No. D2003-0055
1. The Parties
The Complainant is Registered Agents, Ltd. of Wilmington, Delaware, United States of America, represented by Connolly Bove Lodge & Hutz, LLP of United States of America.
The Respondent is Ali Qureshi Pvt of Rawalpindi, Pakistan.
2. The Domain Name and Registrar
The disputed domain name <wwwincusa.com> is registered with eNom, Inc ("the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on January 24, 2003. The Center transmitted the standard request for verification by email to the Registrar on January 27, 2003. The Registrar verified by email the same day that it was the Registrar and the Respondent was the registrant of the disputed domain name and provided the Respondentís contact details. The Registrar did not confirm that the UDRP applied or that the disputed domain name would be locked during the administrative proceeding and did not indicate the language of the registration agreement. However, the Panel has no reason to doubt that the UDRP applies and that the registration agreement was in English given that the Registrar is a US company. The Registrar also failed to indicate whether the registration agreement contained a submission to the Registrarís jurisdiction, but this does not matter since the Complainant has submitted to the Respondentís jurisdiction.
The Center checked the Complaint for compliance with the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") on January 28, 2003.
The Center employed all reasonably available means to notify the Complaint to the Respondent in accordance with the Rules, paragraphs 2(a) and 4(a), by sending it by email, courier and fax to the addresses and numbers in the Registrarís WHOIS database for the Registrant, Administrative, Billing and Technical contacts; and by email and courier to addresses indicated on the "corporationstore.com" website to which the disputed domain name resolves; and by email to email@example.com. The notification was sent and the proceedings commenced on January 28, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 17, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 18, 2003, and appointed Jonathan Turner as the sole Panelist in this matter on February 20, 2003. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having reviewed the file, the Panel considers that the Complaint complied with the applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has provided incorporation and registered agent services since August 1979. The Complainant registered the domain name <wwwincusa.com> on November 1, 1996, and has used "incUSA.com" as its service mark since that date on its website, stationery and advertisements, in connection with its services of filing and retrieval of incorporation and corporate documents with governmental agencies. Between 1997 and 2001, the Complainant spent US $750,000 on advertising and promoting its services and its "incUSA.com" service mark, and had sales of over US$6,000,000 under this mark. The Complainant applied to register a new "incUSA.com" logo as a US trademark in June 2001, and the application was granted on January 21, 2003.
The Respondent registered the disputed domain name on June 11, 2002, and caused or allowed it to resolve to a website at "www.corporationstore.com" which offers services identical to those provided by the Complainant.
5. Partiesí Contentions
The Complainant contends that the disputed domain name is confusingly similar to its domain name <wwwincusa.com> in which it has unregistered trade mark rights and to its mark "incUSA.com" in which it has registered and unregistered trademark rights. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that it was registered and is being used in bad faith to divert customers and potential customers of the Complainant to the competing services offered at "www.corporationstore.com."
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with paragraph 4 of the Policy, the Complainant must prove (A) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (B) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (C) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar to Mark in which Complainant has Rights
The Panel is satisfied that the Complainant has unregistered trademark rights in its domain name <wwwincusa.com> and in its mark "incUSA.com" as a result of its use of these names in its business of providing incorporation and associated services. Although formed of the descriptive elements "inc" and "USA", the Panel considers that the concatenation "incUSA" is capable of acquiring secondary meaning through use, and has no reason to doubt the Complainantís undisputed evidence that it has done so, and had done so before the registration of the disputed domain name.
For the purposes of Paragraph 4(a)(i) of the Policy, the Panel also considers that the Complainant can rely on its registered trademark, the "incUSA.COM" logo. Although registration of the mark was only granted after the registration of the disputed domain name, the application for registration of the mark was made earlier and has priority in accordance with the principle recognized in the Paris Convention on Industrial and Commercial Property. On any view, a complainant should be able to base a Complaint under the Policy on a trade mark right which has priority over the disputed domain name in accordance with this internationally accepted principle. It is not necessary to consider here the more difficult question whether a complainant under the Policy can rely on the registration of a trade mark pursuant to an application made after the registration of the disputed domain name.
The Panel holds that the disputed domain name is confusingly similar to each of these marks. It differs from the Complainantís domain name only in the omission of a full stop. This is insufficient to avoid confusion, particularly as such an omission is treated by modern browsers as a mistyping which they automatically correct. The disputed domain name differs from the Complainantís mark "incUSA.com" only by the addition of the prefix "www", which is obviously generic in the context of the internet and not apt to distinguish. (There is no distinction between upper and lower case in domain names.) Although the Complainantís registered mark is a logo, the dominant feature is the word "incUSA.com", and again the Panel holds that the disputed domain name is confusingly similar to this mark.
B. Rights or Legitimate Interests of Respondent
The Panel further considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It appears that the only use made of the disputed domain name has been to direct Internet users to the website of a competitor. Such use of a domain name which is confusingly similar to one in which the Complainant has established rights does not constitute a bona fide offering for the purposes of paragraph 4(c)(i) of the Policy.
C. Registered and Used in Bad Faith
The Panel is also satisfied that the disputed domain name was registered and is being used in bad faith. In particular, the Panel considers that it has been used in bad faith to divert customers and potential customers of the Complainant through its confusing similarity to the Complainantís domain name to the website offering competing services at "www.corporationstore.com" to which it resolves. The Panel further infers that the disputed domain name was registered in bad faith from the improper use which has been made and the absence of any evidence of any other purpose of its registration. Furthermore, the Respondent has not disputed the Complainantís allegations that it registered and has used the Disputed Domain Name in bad faith.
The disputed domain name is unlikely to be used for any legitimate purpose by any person other than the Complainant, and it is appropriate to transfer it to the Complainant as requested in the Complaint.
For the above reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel decides that the domain name <wwwincusa.com> should be transferred to the Complainant.
Dated: February 25, 2003