Investigative Network, Inc. / Frederic Alan Petrovsky v. Brian Collister / Investigative News Network
Claim Number: FA2009001913368
Complainant is Investigative Network, Inc. / Frederic Alan Petrovsky (“Complainant”), Arizona, USA. Respondent is Brian Collister / Investigative News Network (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <investigativenetwork.org>, registered with NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2020; the Forum received payment on September 23, 2020.
On September 23, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <investigativenetwork.org> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the Policy).
On September 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 20, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@investigativenetwork.org. Also on September 30, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 20, 2020.
A timely Additional Submission was received from Complainant on October 21, 2020.
On October 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the INVESTIGATIVE NETWORK mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,039,703, registered Feb. 25, 1997). Respondent’s <investigativenetwork.org> domain name is identical or confusingly similar to Complainant’s mark.
Respondents has no rights or legitimate interests in the <investigativenetwork.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely diverting Internet users to a competing website.
Respondent registered and uses the <investigativenetwork.org> domain name in bad faith. Specifically, Respondent is operating a competing website that is disruptive to Complainant’s business. Respondent has refused any attempts by Complainant to negotiate the transfer of the disputed domain name.
B. Respondent
Respondent is a nonprofit corporation which produces investigative reports and videos. Complainant has failed to establish that Complainant has used the mark extensively and continuously in commerce.
Respondent has rights and legitimate interest in the <investigativenetwork.org> domain name because Respondent is a non-profit investigative journalism firm that does not offer the same services as Complainant.
C. Additional Submissions
Complainant provided emails to indicate that Complainant had sought to negotiate with Respondent regarding purchase of the disputed domain name. Respondent did not provide any response to that or otherwise provide any additional submissions.
The Panel notes that the <investigativenetwork.org> domain name was registered on or about March 12, 2018.
Complainant is Investigative Network Inc./Frederic Alan Petrovsky (Complainant) of Cave Creek, AZ, USA. Complainant is the owner of the domestic registration for the mark INVESTIGATIVE NETWORK which it has continuously used since at least as early as 1984 in connection with its provision of newsletters and opinions, providing sources of information regarding various types of investigations, primarily directed toward intellectual property issues. Complainant also conducts business on the internet from its website located at <investigativenetwork.com> which it has continuously used since its registration in 2011.
Respondent is Brian Collister/Investigative News Network of Austin, TX, USA. Respondent’s registrar’s address is listed as Phoenix, AZ, USA. Respondent registered the disputed domain name after Complainant’s trademark and domain name registrations in connection with its provision of what it represents to be high quality videos and film investigative journalism. The Panel notes that the <investigativenetwork.org> domain name was registered on or about March 12, 2018.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the INVESTIGATIVE NETWORK mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,039,703, registered Feb. 25, 1997). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds that the Complainant has rights in the INVESTIGATIVE NETWORK mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <investigativenetwork.org> domain name is identical or confusingly similar to Complainant’s mark. While Complainant does not specify what makes the disputed domain name confusingly similar, the Panel notes the only difference between the mark and the disputed domain name is the addition of the “.org” generic top-level domain (“gTLD”). Adding a gTLD to an otherwise fully incorporated mark may not sufficiently distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). The Panel here finds Respondent’s <investigativenetwork.org> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises no contentions regarding Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <investigativenetwork.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel here notes the WHOIS of record identifies the Respondent as “Brian Collister / Investigative News Network” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Nor does Respondent’s submission in this matter indicate any authorization was ever granted. The Panel here finds that Respondent has no rights or legitimate interests in the <investigativenetwork.org> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to use the <investigativenetwork.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is merely diverting Internet users to a competing website. Using a disputed domain name to compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Here, Complainant contends that Respondent performs the same private investigations services as Complainant and, in Google searches, is ranked higher than Complainant’s website which shows the disputed domain name is used to divert potential customers away from Complainant.
Respondent argues Respondent has rights and legitimate interest in the <investigativenetwork.org> domain name because Respondent is not competing with Complainant and instead offers an unrelated service. Registering a disputed domain name that is not related to a complainant’s goods or services may be evidence of good faith. See VIP ME ENTERPRISES LLC LIMITED LIABILITY COMPANY NEVADA v. frank ma / Vipshop (US) Inc., FA 1702016 (Forum Dec. 20, 2016) (“Respondent contends that the Domain Name is used for a legitimate offering of on-line retail services featuring women’s fashion apparel which is unrelated to Complainant’s use of the VIPME mark… On that basis, the Panel considers that Respondent has sufficiently demonstrated rights or legitimate interests in the Domain Name through its use.”). Here, Respondent provides screenshots of Respondent’s various news outlet options, as well as Complainant’s legitimate domain name’s resolving webpage, to highlight the differences in the two parties’ services.
The Panel notes that Respondent’s website does not claim to investigate the same subject matter as Complainant’s website however Respondent does claim to offer the same service of investigative research via a network of sources.
The Panel here finds Respondent fails to use the <investigativenetwork.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Complainant has proven this element.
Complainant argues Respondent registered and uses the <investigativenetwork.org> domain name in bad faith. Specifically, Respondent is operating a competing website that is disruptive to Complainant’s business. Registering a disputed domain name for the purpose of competing directly with a complainant in a disruptive manner may be evidence of bad faith under Policy ¶ 4(b)(iii). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”). Here, Complainant contends that Respondent is attempting to directly compete with Complainant’s private investigation service.
Respondent argues that its use of the <investigativenetwork.org> domain name for nonprofit information and educational services shows Respondent did not register or use the domain name in bad faith. Because Policy ¶ 4(a)(iii) generally requires both registration and use in bad faith, good faith registration or use of the domain name can preclude a finding for Complainant. See Sanitech Corp. v. Paton, FA 935273 (Forum Apr. 30, 2007) (holding that Policy ¶ 4(a)(iii) requires bad faith registration and use, so where a respondent initially registered the disputed domain name in good faith, the panel should deny the transfer of the disputed domain name to the complainant). Although one may conclude that providing nonprofit information and educational services indicate good faith to some degree, those actions alone will not normally suffice to justify the identical registration of an established trademark and domain name of an entity that provides the same or similar services.
The Panel here finds Respondent registered and uses the <investigativenetwork.org> domain name in bad faith under Policy ¶ 4(b)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <investigativenetwork.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 9, 2020
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