The Complainant is Intagent LLC, Ann Arbor, Michigan, United States of America, representing itself.
The Respondent is Dominor LLC, Miami, Florida, United States, representing itself.
The disputed domain name <intagent.net> is registered with Wild West Domains, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2008. On December 5, 2008, the Center transmitted by email to the registrar identified in the Complaint, GoDaddy.com, Inc., a request for registrar verification in connection with the disputed domain name. On December 5, 2008, Wild West Domains, Inc. advised the Center that it is the registrar of the disputed domain name (not GoDaddy.com, Inc.), and Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient regarding the identity of the registrar, the Complainant filed an amendment to the Complaint on December 12, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2009. Respondent sent two informal email communications on December 12, 2008 prior to the Notification of Complaint. Respondent further sent two e-mail communications on December 15, 2008 and December 17, 2008, and confirmed that these communications should be regarded as its Response.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 14, 2009. The Panel finds that it was properly constituted. The Panel 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.
Complainant has registered the word service mark INTAGENT on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3549505, dated December 23, 2008, in International Class 42, covering “Creating, designing and maintaining websites”, claiming date of first use of January 1, 2006 and first use in commerce of January 1, 2007.1 Complainant filed its application for registration of the INTAGENT mark on April 19, 2008 (registration number 3549505).
Complainant alleges that it held registration of the disputed domain name <intagent.net> since October 5, 2005, but it did not provide evidence to support that claim. Other than in its service mark application, Complainant has not indicated when it commenced doing business under the INTAGENT mark. Complainant has provided a screenshot printout of its website at “www.intagent.com” dated December 4, 2008. Complainant indicates that it ceased to hold registration of the disputed domain name on October 8, 2008. Complainant does not indicate the reason why it allowed its registration to expire.
Complainant is a web design and development company for real estate related products. Complainant indicates that the INTAGENT mark is commonly searched for by real estate professionals looking for personalized websites.
According to the Registrar's verification report, Respondent is registrant of the disputed domain name. The Registrar's verification report indicates that the record of registration for the disputed domain name was created on October 8, 2005, expires on October 8, 2009, and was last updated on November 26, 2008. Complainant indicates that the change of registrant took place on November 20, 2008. It is common ground between the parties that Complainant's registration of the disputed domain name expired on October 8, 2008. Respondent indicates that it purchased the domain name through a GoDaddy.com, Inc. expired domain name auction. This suggests that the Registrar has maintained the original date of creation of the record of registration notwithstanding a change of registrant. Complainant and Respondent are in agreement that Complainant's registration expired on October 8, 2008, and that Respondent acquired the disputed domain name in November 2009. The Panel considers these facts as sufficiently established.
Complainant has provided evidence that as of December 4, 2008, the disputed domain name <intagent.net> directed Internet users to a website identical to that of Complainant at “www.intagent.com” (Complaint, Annex 4). Respondent contends that the disputed domain name remained directed to Complainant's server following expiration of Complainant's registration, and that Respondent subsequently redirected the disputed domain name to another server. Respondent asserts “The only reason we bought this domain name to utilize its Google Page Rank and its aging for our search engine optimization work. We have no intention to use their content or any part from their websites.” (Response) As of January 29, 2009, a webpage addressed by the disputed domain name contained solely the statement “International Real Estate Agent Network” at the top left (Panel visit to “www.intagent.net” of January 29, 2009).
The Registration Agreement in effect between Respondent and Wild West Domains, Inc. subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a).
Complainant asserts rights in the service mark INTAGENT based on use in commerce and as evidenced by registration at the USPTO.
Complainant argues that the disputed domain name is identical to its service mark.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain name because Respondent has never been known to use the name INTAGENT and because Respondent has never been known by the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith by copying all files and images from its “www.intagent.com” website and placing them on “www.integent.net”. Complainant argues that Respondent did this intentionally for commercial gain to attract Internet users to Respondent's website by creating Internet user confusion regarding whether Complainant is a source, sponsor, affiliate, or endorser of Respondent's website. Complainant further argues that Respondent did this for the purpose of selling websites under a false name and to disrupt Complainant's business.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent argues that it purchased the disputed domain name fairly at auction after Complainant failed to renew it.
Respondent contends that it did not receive any warning from Complainant concerning this matter such that might have allowed the parties to resolve the present problem.
Respondent indicates that it never copied content from Complainant's website, and that the disputed domain name continued to be directed to Complainant's server following Respondent's purchase through no fault or action of Respondent. Respondent argues that, if anything, Complainant is at fault for using Respondent's fairly purchased domain name to direct Internet users to Complainant's website.
Respondent argues that it purchased the disputed domain name to utilize its Google Page Rank, and its aging for its search engine optimization work. Respondent indicates that it has no intention to use any content from or any part of Complainant's website.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a).
Respondent received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has demonstrated rights in the service mark INTAGENT based on use in commerce and as evidenced by registration at the USPTO (see Factual Background, supra).
The date of application for trademark registration serves as constructive first use contingent upon issuance of the registration. The U.S. Lanham Act provides:
Contingent on the registration of a mark on the principal register provided by this Act, the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect, on or in connection with the goods or services specified in the registration against any other person except [not applicable here] (15 U.S.C. §1057)
Complainant's presumption of rights in the INTAGENT mark based on the submission of its application for federal registration arose on April 19, 2008.2 Complainant has furnished evidence of its use of the service mark on the Internet as of December 4, 2008 through the submission of a webpage screenshot from “www.intagent.com”
The disputed domain name incorporates Complainant's mark without any modification, but for addition of the generic top level domain (gTLD) identifier “.net”. The disputed domain name and Complainant's mark are identical for purposes of the policy.
The Panel determines that Complainant has rights in the service mark INTAGENT and that the disputed domain name is identical to that mark.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c))
Respondent has not been authorized by Complainant to use its INTAGENT service mark. There is no evidence to show that Respondent has been commonly known by the disputed domain name.
Respondent may be understood to argue that it has made a bona fide offer of services prior to notice of a dispute from Complainant, and/or that it is making fair use of Complainant's mark. Neither of these arguments is persuasive here.
While it is understandable that Respondent considers it unfair that a domain name registrar may auction an expired domain name the use of which may be encumbered by trademark rights, such auction of expired names is the consistent with the registration system adopted and implemented by ICANN. It is the responsibility of domain name bidders and registrants to determine whether and how they may be entitled to use the domain names.
In the instant proceeding, Respondent could readily have determined that INTAGENT was the subject of a pending service mark application for registration at the USPTO before it placed its bid by using the publicly available search facilities of the USPTO. Moreover, Respondent should have been aware of Complainant's active commercial website addressed by several domain names that are identical to the one Respondent purchased, but for use of different gTLDs.
Accepting Respondent's version of the facts, its use of the disputed domain name subsequent to purchase initially involved allowing the domain name to resolve to content on Complainant's server. It is difficult to see how this could be construed as a bona fide offer of services by Respondent such that might establish rights or legitimate interests.
Again accepting Respondent's version of the facts, its subsequent redirection of the disputed domain name to a webpage referring only to a type of services in the same general area as those provided by Complainant (i.e., “International Real Estate Agent Network”) does not establish fair use by Respondent. At best, this might be construed as using a neutral “parking page”. This does not establish rights or legitimate interests in a term protected as the service mark.
Respondent argues that its real intention for purchasing the disputed domain name was “to utilize its Google Page Rank and its aging for our search engine optimization work”. The Panel does not understand how such use might establish rights or legitimate interests in favor of Respondent. By using the domain name that incorporates Complainant's mark Respondent may well be able to generate more search hits for its own website, but this mainly appears to suggest that Respondent is seeking to take unfair advantage of Complainant's goodwill in its mark. As to the claimed use with respect to “aging for search engine optimization work”, the Panel does not follow Respondent's line of reasoning, or what legal entitlement to use of Complainant's mark Respondent is suggesting.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent's] website or location or of a product or service on your website or location” (id., paragraph 4(b)(iv)).
Respondent has indicated that it purchased the disputed domain name to take advantage of the Google Page Rank associated with Complainant's website. This implies that Respondent's intent in purchasing the name was to direct Internet users to its own website based on association with Complainant's service mark. Respondent has redirected the disputed domain name to a page with a heading that describes services in the same area as those of Complainant. Respondent appears to have registered the disputed domain name intentionally for commercial gain for the purpose of confusing Internet users as to Complainant's association as source, sponsor or affiliate of Respondent's website.
Respondent's main defense to Complainant's claim that it sought to take unfair advantage of Complainant's mark is that Respondent acted in good faith because the former registrar of the disputed domain name offered it for sale at auction. That is not a viable defense under the Policy. Registrars may offer domain names for sale and registration in the United States without assessment of whether they may conflict with trademark rights. It is up to the purchaser and registrant to assess its legal position.
The Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <intagent.net>, be transferred to the Complainant.
Frederick M. Abbott
Dated: January 29, 2009
1 Complainant alleged registration at the USPTO but failed to provide evidence of registration, such as a current USPTO Trademark Electronic Search System (TESS) printout. The Panel was able to retrieve the information from TESS.
2 Claims of date of first use in applications for registration of trademarks at the USPTO do not establish presumptions of use as of the claimed date. See, e.g., Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333. Complainant has alleged earlier registration of domain names incorporating its service mark, and there is evidence that the disputed domain name previously held by Complainant was registered on October 8, 2005. However, registration of a domain name and its use in commerce are not equivalent.