WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RiskWise L.L.C. v. Domain Strategy Inc.
Case No. D2002-0125
1. The Parties
The Complainant is RiskWise L.L.C. of Saint Cloud, MN, United States of America.
The Respondent is Domain Strategy Inc. of Val-D'Or, Quebec, Canada.
2. The Domain Name and Registrar
The domain name at issue is <risk-wise.com>, and the Registrar is iHoldings.com, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complaint on February 7, 2002 (electronic version) and on February 13, 2002 (hard copy). On February 21, 2002 the Center sent Notification of Deficiency to the Complainant, and on the same day (electronic version) and on March 1, 2002 (hard copy) the Center received the Complainant's Submission to correct the deficiencies. The Center verified that the Complaint satisfied 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding was March 7, 2002.
On February 11, 2002 the Center transmitted via email to iHoldings.com, Inc. a request for registrar verification in connection with this case and on February 21, 2002, iHoldings.com, Inc. transmitted by email to the Center iHoldings.com's verification response confirming that the registrant is "Domain Strategy Inc." and that the contact for both administrative and technical purposes is Christian Francoeur at the same address as the Respondent.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on March 7, 2002 to the Respondent the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by March 27, 2002. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to the Respondent and to Christian Francoeur at the Respondent's address.
No Response was received from the Respondent(s) by the due date of March 27, 2002. Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondent to the Notification of the Respondent's Default was received.
Having received on April 18, 2002 Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was May 6, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having verified the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.
On April 25, 2002 the Center sent to the Complainant and the Respondent the Panel's Procedural Order No. 1 in which the Panel requested additional information from the Complainant relating to (1) the Complainant's business; (2) the original registration by the Complainant of the domain name in issue; and (3) the Complainant's RISKWISE service mark. Pursuant to that Procedural Order additional information was received from the Complainant on April 26, 2002.
4. Factual background
4.1 The Complainant
4.1.1 The Genesis of the Complainant
The Complainant was incorporated in Delaware and its principal place of business is Saint Cloud, Minnesota.
The Complainant's predecessor in business was Business Transactions Express Inc (BTE), which was incorporated on August 18, 1993. The business of BTE was the provision of skip tracing, data verification / validation and risk assessment products. Subsequently the Complainant, RiskWise LLC, was formed and the business and employees of BTE were transferred to the Complainant. BTE now exists as a shell corporation at the same address as the Complainant.
4.1.2 The Business of the Complainant
In June 2000 the Complainant was acquired by Lexis Nexis (a Reed Elsevier company). The Complainant has 68 employees. It provides high speed, real-time transaction processing to many US banks, well-known online retailers (including Amazon.com; BestBuy.com; and Expedia.com) and to the US government. The Complainant is a leading provider of automated, real-time, fraud identity verification, risk scoring and collecting solutions. It assists companies implement new and creative solutions to increase revenue and control loss with its extensive data network, real-time processing capabilities and scoring expertise. It provides fast, flexible services to companies that operate in traditional channels or on the web, or both. Its customers include companies in the fields of telecommunications, banking, the provision of auto finance, securities and retail.
4.1.3 The Complainant's Service Marks
The Complainant has 2 US Service Mark applications:
- US APP. 75615096 RISKWISE (Class 36) filed January 4, 1999. The application was published for opposition on January 18, 2000. It claims first use in commerce on June 1, 1999. The prosecution history records that on February 1, 2002 the application was allowed for registration.
- US App. 75817334 RISKWISE.com (Classes 35 and 36) filed October 7, 1999. The application was published for opposition on September 26, 2000. First use in commerce is claimed from June 28, 1999. The prosecution history records that Notice of Allowance was mailed on August 28, 2001 and an extension has been granted for the Complainant to file evidence of use.
4.1.4 The Complainant's Domain Names
- The Complainant uses the domain name <riskwise.com> which continues to be registered in the name of BTE.
- The domain name in issue, <risk-wise.com>, was registered by BTE with Network Solutions Inc on October 14, 1998 and fell due for renewal in October 2001. According to the Complainant, no invoice for that renewal was received by its Accounting Department. The registrant BTE has its offices at the same address as the Complainant and is the predecessor in business of the Complaint (paragraph 4.1.1 above). That domain name was, therefore, inadvertently allowed to lapse for non-payment of the renewal fee.
4.1.5 Complainant's Use of the RISKWISE Service Mark
The Complainant has provided a copy of the Lexis Nexis homepage, which includes a section relating to RiskWise and the services it offers. Where the Complainant is referred to it is accompanied by the registered trademark symbol, RiskWise®. The two service mark applications claim first use in commerce in June 1999 (see, paragraph 4.1.3 above).
4.2 The Respondent
In the absence of a Response, nothing is known about the Respondent or its business except what is stated in the Complaint. The domain name in issue was registered by the Respondent on January 13, 2002. The Complaint states that the Respondent is in the business of selling domain names and is a reselling partner for DotRegister.com with whom the domain name in issue has been registered since January 13, 2002. (DotRegister.com is the trading name of iHoldings.com, Inc.)
5. The Parties Contentions
5.1 The Complainant
5.1.1 Failure to renew the original <risk-wise.com> domain name occurred in the circumstances explained in paragraph 4.1.4 above. When the Complainant realised this it contacted the Respondent by email on January 16, 2002 in the following terms:
"Through an accounting error, it appears that one of our domain names has expired and was picked up by your company, Domain Strategy Inc. The purpose of this email is to request the transfer of the domain name <risk-wise.com> back to RiskWise LLC. The $70 registration fee you incurred will be reimbursed to you.
If you have any questions, please feel free to call or email me.
Thank you for your time."
No reply was received from the Respondent and on January 21, 2002 the Complainant sent the Respondent a further email, which read:
"This is a follow-up letter to the message sent on January 16, 2002 with regards to the <risk-wise.com> domain.
If I do not hear from you by January 25, 2002, I will be filing a complaint with ICANN regarding this particular domain dispute. I trust you will get back with me in a timely manner.
On January 24, 2002 the Respondent sent an email to the Complainant in the following terms:
"Our company registers expired domain names that generate traffic for our websites.
We have redirected <risk-wise.com> on <domainstrategy.com> to know how many hits it brings. We will get back to you with an offer in 2 or 3 days."
Then on January 29, 2002 the Respondent sent a follow-up email to the Complainant, which read:
"The domain name <risk-wise.com> doesn't seem to generate a lot of traffic. We would sell it for 1000 $ US. If you agree, we will proceed with http://www.escrow.com for the transaction. Of course, we will take care of all expenses attached to the domain name transfer."
5.1.2 The Complainant states that its products and services could be found at both the domain name in issue and at <riskwise.com> and those domain names were established portals with the Complainant's customers. The Complainant asserts that its documentation and sales material makes reference to the domain name in issue.
5.1.3 The domain name in issue is not being used by the Respondent nor is there any intention to use it. The Complaint points to the Respondent's <domainstrategy.com> web page, which contains only the tag line "We Know The Domain Game".
"Website coming soon email us."
The Respondent's intentions are, the Complainant says, apparent from the email exchange set out in paragraph 5.1.1 above. The Respondent's action in redirecting the domain name in issue to its <domainstrategy.com> home page has, according to the Complaint, caused some confusion among the Complainant's partners and customers.
5.1.4 The Complainant asserts that the domain name in issue is identical or confusingly similar to the RISKWISE and RISKWISE.COM service marks in which it has rights; that the Respondent has no rights or legitimate interests in respect of that domain name; and that the domain name was registered and is being used in bad faith. As to the latter, the Complaint asserts that the Respondent acquired the domain name in issue primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the out of pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy - see, below). In the circumstances, the Complainant seeks transfer of the domain name in issue.
5.2. The Respondent
No Response has been filed. The only communications from the Respondent before the Panel are the emails of January 24 and 29, 2002 set out in paragraph 5.1.1 above.
6.Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
6.4 Identical or Confusingly Similar
The Complainant is the registered proprietor by assignment of the two US service mark applications, RISKWISE (Class 36) and RISKWISE.COM (Classes 35 and 36), respectively filed in January and October 1999, both claiming first use in commerce dating from June 1999. As noted in paragraph 4.1.3, RISKWISE was allowed for registration in February 2002 and Notice of Allowance issued for RISKWISE.COM in August 2001. Additionally, the Complainant's predecessor in business, BTE has been registrant of the <riskwise.com> since August 2, 2000 and first registered< risk-wise.com> (the domain name in issue) in October 1998.
The Panel is satisfied that the Complainant has rights in the service mark RISKWISE for the purpose of paragraph 4(a)(i) of the Policy.
Use of a hyphen in the domain name in issue does not distinguish it from the Complainant's RISKWISE service mark with which it is to all intents and purposes identical. It is certainly confusingly similar. The Complaint satisfies the first requirement of paragraph 4(a) of the Policy.
6.5 Rights or Legitimate Interests
No Response has been submitted. Certainly, the Complainant has neither licensed nor otherwise authorised use by the Respondent of the domain name in issue. The Respondent has stated that it is in the business of registering expired domain names and offering them for sale. Whilst sale of domain names can constitute a legitimate activity, there is nothing in the email exchange between the parties to indicate that the Respondent could maintain rights or legitimate interests in respect of the <risk-wise.com> domain name. The Complaint satisfied the second requirement of paragraph 4(a) of the Policy.
6.6 Registered and Used in Bad Faith
Failure to submit a Response can be an indication of bad faith see Telstra v. Nuclear Marshmallows, WIPO Case No. D2001-0003. Furthermore, on the facts set out in the Complaint, the Panel finds that the circumstances set out in paragraph 4(b)(i) of the Policy are present and that the Complaint, therefore, satisfies the third requirement of paragraph 4(a) of the Policy.
For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. Accordingly, the Panel requires that registration of the domain name <risk-wise.com> be transferred to the Complainant.
Dated: May 7, 2002