DECISION

 

Commonwealth Communications Group, Inc. v. David Lahoti dba eSecure

Claim Number: FA0109000100124

 

PARTIES

Complainant is Commonwealth Communications Group, Inc., Newton, MA (“Complainant”) represented by Cory B. Schauer, of Gargill, Sassoon & Rudolph LLP. 

 

Respondent is David Lahoti dba eSecure, Tustin, CA (“Respondent”), represented by Brett P. Wakino.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <intelilink.com>, registered with Tucows.

 

PANEL

The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as a Panelist in this proceeding.

 

David H. Bernstein, Esq., Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) on September 17, 2001.  On September 24, 2001, the Forum notified Complainant that its Complaint was deficient, and on the same day an amended Complaint was submitted.  The Forum verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“the Policy”), the Rules for the Policy and the Supplemental Rules for the Policy, and that payment in the required amount had been made.

 

On September 25, 2001, Tucows confirmed by e-mail to the Forum that the domain name <intelilink.com> is registered with Tucows and that the Respondent is the current registrant of the name.  Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On September 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail and post.

 

A timely response was received and determined to be complete on October 15, 2001.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant, whose business involves providing direct Internet access and computer software for business clients, alleges that it first used “Intelilink” in commerce in June 2000 and registered the domain name <intelilink.com> with Network Solutions (“NSI”) on October 30, 2000.  Relying on an e-mail from Network Solutions approving the registration, Complainant commenced marketing with the domain name <intelilink.com>.  On September 19, 2000, Complainant applied for registration of INTELILINK as a trademark in the United States.  On or about July 26, 2001, Complainant learned that Respondent was using the domain name <intelilink.com>.  Complainant believed that Respondent had been assigned the domain name through error and inadvertence.  Shortly thereafter, Respondent objected to both Respondent and to NSI.

 

Complainant alleges that Respondent has not used the domain name at issue in connection with a bona fide offering of goods or services and has not been commonly known by the domain name.  Complainant states that <intelilink.com> and over 180 other domain names owned by Respondent, including <tacobell.net>, are automatically forwarded to a “dummy” website.  After Complainant contacted Respondent, Respondent offered to transfer the domain name to Complainant if Complainant could secure <intellisearch.com> in exchange. 

 

Complainant alleges that Respondent’s use of the domain name at issue violates Complainant’s common law and pending trademark rights and is likely to cause consumer confusion and harm Complainant.  Complainant further alleges that Respondent’s offer of <intelilink.com> to Complainant for valuable consideration shows its bad faith, and that Respondent has intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s web site or products or services advertised thereon.

 

B. Respondent

Respondent states that Complainant may have registered the domain name at issue on or about October 30, 2000, but that Complainant’s registration was ultimately deleted because Complainant failed to pay the registration fee.  As a result, the domain name was available to the public, and was ultimately registered by Respondent. 

 

Respondent also states that there is no pending registration for the INTELILINK mark.  Furthermore, Respondent alleges that “Intelilink” or a variation thereof can be used to describe web-based directories and linking, and that the term is generic or merely descriptive of Respondent’s business of offering on-line directories, which is distinct from Complainant’s business.  Respondent states that numerous domain names use variations on “Intelilink” and that another registrant used <intelilink.com> for three years before Complainant’s claimed first use in commerce, preventing any inference of likely confusion.

 

Respondent further alleges that it is a registered domain name registrar and a developer of a variety of web-based businesses.  It states that the <tacobell.net> website is owned by Tricon Global Restaurants, owners of the Taco Bell mark, that Taco Bell used Respondent’s services to register the domain name, and that, pending the launch or redirection of that site, the domain name resolves to Respondent’s default web page.  Respondent further alleges that it has a legitimate interest in the domain name at issue.

 

Finally, Respondent disputes the allegations of bad faith, and alleges that it has always acted in good faith, and has asked for verification of Complainant’s interest in the domain name without result, in addition to offering an exchange for <intellisearch.com> in the interests of settlement.  Respondent alleges that Complainant has engaged in reverse domain name hijacking under the Rules.

 

C. Complainant’s Reply and Respondent’s Additional Submission

Complainant filed an additional submission, which was received by the Forum on October 24, 2001.  On November 2, 2001, Respondent filed its own additional submission, objecting to Complainant’s filing and offering rebuttal information in the event Complainant’s submission were accepted.

 

Complainant’s submission (and Respondent’s rebuttal) was untimely pursuant to the Forum’s Supplemental Rule 7.  Because Complainant failed to provide any justification for its untimely submission, the Panel agrees that the submission should be disregarded.  Respondent’s request for consideration of its rebuttal information is denied as moot.

 

FINDINGS

Complainant has submitted a printout from Network Solutions’ website and an e-mail from Network Solutions, both dated October 30, 2000, indicating that Complainant purchased the <intelilink.com> domain name.  Respondent states that the registration was subsequently cancelled for nonpayment, and submits an e-mail from an employee of Verisign in support of this contention.  The Panel finds that the registration was cancelled for nonpayment. 

 

Complainant states that it has a pending trademark registration with the U.S. Patent and Trademark Office, and submits a receipt from the filing.  Respondent submits a printout from the U.S. Trademark Electronic Search System indicating that the application was abandoned on August 15, 2001 for failure to respond to the examining attorney’s non-final action, mailed February 15, 2001.  The Panel finds that the application for registration has been abandoned. 

 

Complainant submits that Respondent has registered numerous domain names, including <tacobell.net>.  Respondent submits an e-mail from the manager of the Taco Bell Internet Technology Team directing Respondent to “retain hold of” the domain name.  The Panel finds that <tacobell.net> is being held under the authority of the trademark owner.

 

It should be noted that the Panel relies solely upon the evidence submitted.  While the Panel may nonetheless resolve disputed issues of fact, if a non-prevailing party believes that the proper resolution of the dispute requires additional fact-finding, it may initiate a judicial proceeding in an appropriate jurisdiction. 

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar to Mark in Which Complainant Has Rights

The first element of the Policy requires a Complainant to show that it has rights in the domain name at issue.  Complainant has failed to do so.  Its alleged mark is unregistered, meaning that there is no presumption that Complainant’s mark is valid.  While the Panel accepts the allegations of the Complaint, mere conclusory assertions of trademark rights in an unregistered mark will not suffice.  Instead, a complainant must provide some evidence sufficient to justify the conclusion that it has common law rights in the mark at issue.  See, e.g., America.com Inc. v. PSS InterNet Services, Inc., FA 96784 (Nat. Arb. Forum, Apr. 19, 2001); Aquarius Enterprises, Inc. v. Pet Expo Online, FA 96585 (Nat. Arb. Forum Apr. 6, 2001); Link Clicks Inc. v. Zuccarini, No. D2000-1547 (WIPO Jan. 12, 2001); Tough Traveler, Ltd. v. Kelty Pack, Inc., No. D2000-0783 (WIPO, Sept. 28, 2000).  Complainant has failed to submit any evidence, or allege any specific facts, justifying an inference that the relevant consuming public identifies “Intelilink” with it as the source of goods or services.

 

Complainant relies on its prior use of the domain name at issue to establish its rights (and Respondent’s lack of legitimate interest).  This is not sufficient.  Use of a domain name does not create a property interest in that name unless Complainant has acquired at least common-law rights in the mark incorporated in that domain name.  Otherwise, registrants could never re-register abandoned domain names, contradicting the general rule that available domain names are legitimate unless they violate a trademark owner’s rights under the Policy.  Complainant’s failure to pay its registration fees, whether through its neglect or a failure on the part of the registrar, does not give it special status to prevent re-registration.

 

The Panel thus finds that Complainant lacks rights in the domain name at issue.  Because a Complainant need prove all three factors to prevail, there is no need for the Panel to consider the other elements of the Policy. 

 

Attempted Reverse Domain Name Hijacking

Respondent requests a finding of attempted reverse domain name hijacking.  Although it is a close question, the Panel agrees that such a finding is appropriate in this case.

 

Tending to lean against a finding of reverse domain name hijacking is that Complainant may have been suspicious about the loss of the domain name that it thought it had registered, and may have thought that Respondent was a cybersquatter by virtue of its ownership of <tacobell.net>.  Each of these facts, though, was explainable, and would have been explained had Complainant conducted due diligence prior to filing its Complaint.

 

On the other hand, a finding of reverse domain name hijacking tends to be supported by Respondent’s fairly obvious legitimate interest in the descriptive term “Intelilink” for a website that contains a collection of valid links to other sources.  See Online Resources, Inc. v. On-Line Resources, No. D2001-0257 (WIPO May 15, 2001) (“online resources” was weak, commonly available term for business of providing computer-related goods and services via Internet).  It is reinforced by the fact that the Complaint is devoid of any factual allegations that could establish Complainant’s rights in this name.

 

Here, the balance is tipped by Complainant’s conduct towards the Panel.  Complainant appears to have attempted to mislead the Panel with respect to its rights in this trademark when it stated, in its September 17, 2001 Complaint, that it “has an ‘Intelilink’ trademark pending as filed with the United States Patent and Trademark Office [(“PTO”)] on September 14, 200[0], [Serial No.] 79/132947.”  In fact, according to the PTO’s website, this application was abandoned effective August 15, 2001 by virtue of Complainant’s failure to respond to a February 15, 2001 office action.  Complainant’s citation to this application, already abandoned as of the date of the Complaint, and its false statement that the application was “pending,” is inexcusable, and strong evidence of reckless disregard, if not bad faith, by the Complainant.

 

DECISION

It is the decision of the Panel that the domain name at issue, <intelilink.com>, not be transferred from Respondent to Complainant, and that Complainant be adjudged guilty of attempted Reverse Domain Name Hijacking.

 

 

David Bernstein, Esq, Panelist.

 

Dated: November 5, 2001

 

 

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