DECISION

 

InfoSpace, Inc. v. Vortex Networks

Claim Number: FA0401000223035

 

PARTIES

Complainant is InfoSpace, Inc. (“Complainant”) represented by Pallavi Mehta Wahi, of Stokes Lawrence, PS 800 Fifth Ave., Suite 4000, Seattle, WA 98104-3179.  Respondent is Vortex Networks (“Respondent”), 614 East Highway 50, Suite 112, Clermont, FL 34711.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <netauthorize.net> and <netauthorize.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

 

PANEL

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.

 

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 2, 2004; the Forum received a hard copy of the Complaint on January 5, 2004.

 

On January 6, 2004, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain names <netauthorize.net> and <netauthorize.com> are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the Respondent is the current registrant of the names.  Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 January 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 2, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@netauthorize.net and postmaster@netauthorize.com by e-mail.

 

A timely Response was received and determined to be complete on February 1, 2004.

 

A timely Additional Submission was received from Complainant and was determined to be complete on February 5, 2004.

 

On February 10, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant InfoSpace, Inc. alleges in its Complaint that it is a pre-eminent global provider of wireless and Internet software and application services.  Among other things, Complainant provides directory services offering access to information about various subjects via the Internet, provides search engines for obtaining data on the Internet, and provides for brokerage of electronic commerce transactions conducted via the Internet.

 

The Complaint asserts that Complainant and its predecessor in interest, Go2Net, Inc., have used a family of marks that incorporate the AUTHORIZE.NET designation since at least as early as November 1996, in connection with electronic authorization, processing, and management software and services relating to credit card transactions over the telephone and via the Internet in the U.S. and abroad.  Over the years, Complainant has invested substantial resources and millions of dollars in promoting its services under the AUTHORIZE.NET marks.

 

Complainant indicates that it is the owner of a number of U.S. trademark registrations for marks that consist in whole or in part of the term AUTHORIZE.NET.[1]  Complainant also maintains that it owns the following domain names:  <authorize.net> and <authorizenet.com>.

 

Complainant alleges that the domain names in dispute are substantially identical or confusingly similar to its AUTHORIZE.NET marks.  It maintains that transposing elements of Complainant’s mark does not distinguish Respondent’s domain names or render them dissimilar from Complainant’s AUTHORIZE.NET marks.

 

Complainant further argues that Respondent has no rights or legitimate interests in the disputed domain names. Upon information and belief, Complainant asserts that Respondent has never been known by or operated a business under the <netauthorize.net> and <netauthorize.com> domain names and has no trademark rights in the terms; that Respondent is not authorized by Complainant to use the AUTHORIZE.NET mark or any variations thereof; and that since registering the disputed domain names, Respondent does not appear to have operated any business in connection with the domain names or to have connected it to an operative website.

 

With respect to the issue of “bad faith” registration and use, Complainant contends that its marks are well-known worldwide and, thus, “there can be no dispute that Respondent is aware of and familiar with Complainant and Complainant’s marks.” Complainant also asserts that the use of a domain name confusingly similar to a registered mark to divert Internet users to a commercial website is neither a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use, pursuant to Policy ¶ 4(c)(iii).  Finally, Complainant notes that many ICANN panels have found that registration coupled with inactivity may constitute evidence of “bad faith” under the applicable policy.

 

B. Respondent

Respondent, in its Response, indicates that it registered the domain names in issue for internal use only and had not heard of Complainant prior to its receipt of the “cease and desist” letter of November 3, 2003. (See Appendix C to Complaint.)  According to Respondent, the power of trademark owners to protect their rights “IS A RESTRAINT ON TRADE, AND THEREFORE SHOULD ONLY BE EXERCISED TO PROTECT A CLEAR, ESTABLISHED, WELL FOUNDED AND LIGITAMATE (sic) INTEREST.”

 

Respondent further argues that it used the disputed domain names in connection with a bona fide offering of goods or services and has several legitimate noncommercial and fair use purposes for its domain names.

 

Finally, Respondent maintains that it did not register “or”[2] use the domain name in bad faith, contending that none of the circumstances set forth in Policy ¶ 4(b) is applicable.

 

C. Additional Submissions

In its Additional Submission, Complainant notes that Respondent offered no evidence in support of any of its arguments.

 

FINDINGS

Based on its review of all the evidence and applying the relevant policy, the Panel finds that: (1) the domain names in issue are confusingly similar to marks in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain names; and (3) the domain names have been registered and are being used in bad faith.

 

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

 

The Panel concludes that the disputed domain names – <netauthorize.net> and <netauthorize.com> – are confusingly similar to Complainant’s AUTHORIZE.NET marks. It is clear that the domain names differ from the AUTHORIZE.NET mark only in the transposition of the terms “Authorize” and “Net” and in the addition of the top-level domains “.com” and “.net.”  It is equally clear, however, based on earlier ICANN panel decisions, that such differences do not avoid a finding of “confusingly similar.”  See, e.g., NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL); Playboy Enters. v. Movie Name Co., D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name <channelplayboy.com> confusingly similar to the mark THE PLAYBOY CHANNEL); Pomellato S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000) (ordering transfer of domain name <pomellato.com> based on mark POMELLATO).

 

Based on its use of, and registrations covering, its AUTHORIZE.NET marks, the Panel finds that Complainant has rights in its AUTHORIZE.NET marks.

 

Rights or Legitimate Interests

 

As noted by Complainant in its “Additional Submission,” there is absolutely no evidence[3] in support of Respondent’s claims that it uses the domain names in connection with a bona fide offering of goods and services or that it has several noncommercial and fair uses for the names. Indeed, such arguments are inconsistent with Respondent’s assertion that it simply registered the domain names for internal use and has never posted any information on either site.  Moreover, the Panel’s finding that the domain names are confusingly similar to Complainant’s marks would bar Respondent from succeeding on any “bona fide offering of goods or services” claim, even if the evidence supported such a claim.  See, e.g., U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that respondent’s use of complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).

 

Registration and Use in Bad Faith

 

While the Panel finds that none of the specific circumstances set forth in Policy ¶ 4(b) is applicable, it, nevertheless, concludes that the requisite “bad faith” registration and use exists.  It is well established that the passive holding of a domain name supports a finding of “bad faith” registration and use.  See, e.g., DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that respondent’s passive holding of domain name satisfies the bad faith requirement); Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that respondent made no use of the domain name or website that connects with the domain name and that passive holding of a domain name permits an inference of registration and use in bad faith).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <netauthorize.net> and <netauthorize.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Jeffrey M. Samuels, Panelist
Dated: February 24, 2004

 

 

 

 

 

 

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