National Arbitration Forum

 

DECISION

 

Bonus.com, Inc. v. FYI Networks, Inc.

Claim Number: FA0610000827739

 

PARTIES

Complainant is Bonus.com, Inc. (“Complainant”), represented by Sophie Cohen, of Cobalt, LLP, 819 Bancroft Way, Berkeley, CA 94710.  Respondent is FYI Networks, Inc. (“Respondent”), represented by Stevan Lieberman, of Greenberg & Lieberman 2141 Wisconsin Ave., NW, Suite C2, Washington, DC 20007.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <fyi.com>, registered with Domainbank.

 

PANEL

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

 

Honorable Carolyn M. Johnson, David E.Sorkin, and Estella S. Gold, Chair as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2006.

 

On October 26, 2006, Domainbank confirmed by e-mail to the National Arbitration Forum that the <fyi.com> domain name is registered with Domainbank and that the Respondent is the current registrant of the name.  Domainbank has verified that Respondent is bound by the Domainbank 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 October 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 20, 2006 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@fyi.com by e-mail.

 

A timely Response was received and determined to be complete on November 20, 2006.

 

On November 27, 2006, a timely additional submission by Complainant was received, in accordance with Supplemental Rule No. 7.

 

On December 1, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Carolyn M. Johnson, David E. Sorkin, and Estella S. Gold as Panelists.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges that it has legal rights in the name FYI as follows:

 

            a.         At least as early as August 15, 2002, Complainant started operating an online social networking community under the trademark FYI.  Such online community allows registered users to store, save and share electronic data from various sources, such as images, video or text;

 

            b.         Complainant filed five trademark applications with the U.S. Patent and Trademark Office (“USPTO”) for FYI in connection with the various services it offers to users of its online community.  Complainant registered its first FYI mark with the USPTO on June 24, 2003;

 

            c.         Complainant alleges that the domain name <fyi.com> registered by the Respondent is confusingly identical to Complainant’s registered mark cited above;

 

            d.         Complainant alleges that Respondent has no rights or legitimate interests in the domain name <fyi.com> because: (i) Respondent does not operate a business related to the word FYI and has no trademark or service mark rights in “FYI”; (ii) Respondent is not using the domain name for any bona fide offering of goods or services or even a legitimate noncommercial or fair use; (iii) Respondent is listed as “inactive” by its state of incorporation, Florida as of October 13, 2006;

 

            e.         Complainant alleges that <fyi.com> is being used in bad faith because: (i) Respondent is an inactive business that is not conducting any business or offering any goods or service and that has not used <fyi.com> for over 3 years; (ii) Respondent has a pattern of parking domains or holding them passively for years; (iii) through communications with Complainant, Respondent suggested that it acquired the domain name for the purpose of selling it to an FYI trademark owner at a price likely to substantially exceed the out-of-pocket costs of acquiring  and registering it.

B. Respondent

Respondent alleges that Complainant’s UDRP Complaint is without merit and that Complainant committed reverse domain name hijacking for the following reasons:

 

            a.         FYI is a generic term, to which Complainant does not have the exclusive right;

 

            b.         Although Complainant holds trademark registrations for the term FYI with the USPTO, there are numerous third parties using the term FYI, either singularly or in conjunction with other terms, to identify their business, products, and services.  More importantly, there are numerous United States trademarks incorporating the term FYI, either singularly or in conjunction with other terms, that do not belong to Complainant;

 

            c.         Respondent purchased <fyi.com> on May 22, 2000 for the purpose of trying to be the world market leader for Internet advertisers seeking both effective targeted marketing solutions and consumer branding opportunities all within one search engine environment; prior to the purchase of <fyi.com>, Respondent had obtained 600 domain names with the FYI prefix;

 

            d.         Respondent had a March 2000 Business Plan demonstrating its ambition to use all of the FYI domains in future; Respondent engaged the expert’s services to further that ambition and kept correspondence with the expert;

 

            e.         Respondent asserts that the complexity of its business projective demands a significant time for preparation and the mere amount of time of non-use of the domain name  should not be the per se evidence that it does not intend to use <fyi.com> in connection with offering goods or services;

 

            f.          Respondent asserts that it acquired <fyi.com> long before Complainant’s date of first use of its marks and filing date of the marks;

 

            g.         Respondent asserts that it became inactive due to an oversight and it was reinstated on October 26, 2006, before the official date of this Complaint;

 

            h.         Respondent alleges that Complainant knew of Respondent’s unassailable rights or legitimate interest in <fyi.com> and the clear lack of bad faith registration and use but nevertheless brought the current Complaint in bad faith; therefore, Respondent claims that Complainant’s action constitutes reverse domain name hijacking.

 

C. Additional Submissions

 

Complainant through its additional submissions argues the following:

 

            a.         Whether Complainant has the exclusive right to use the term FYI is irrelevant since Complainant has met its burden of proving (1) that Respondent is the registrant of <fyi.com>; and (2) that <fyi.com> is identical to Complainant’s registered trademark;

 

            b.         Respondent’s six-year-old business plan, sporadic e-mails and proclamations, are insufficient to prove that Respondent is a legitimate, ongoing business or that it plans to offer bona fide services under <fyi.com>;

 

            c.         Respondent’s non-use of the 600 domains, coupled with the multiple phone calls with Complainant to discuss the possible sale of <fyi.com> at a higher price than the out-of-pocket price is suffice to prove Respondent’s bad faith registrations;

 

            d.         Complainant owns legitimate trademark registrations for FYI with the USPTO and has a good faith belief that Respondent has no legitimate rights or interests in <fyi.com>, and, therefore, a reverse domain name hijacking shall not be found.

 

FINDINGS

While most facts in this matter are undisputed, the majority on the Panel finds the following on the disputed facts:

 

1.   In 2000 Respondent[1] engaged the services of J.W. Genesis Inc., which was later acquired by Wachovia Securities Corporation (hereafter, “Wachovia”) to obtain domain <fyi.com>.  Pursuant to a certain agency agreement, Wachovia purchased the domain <fyi.com> on May 20, 2000 on behalf of Respondent.  After the purchase, Wachovia remained the administrative and technical contact in agency for Respondent and had been the recognized registrant of the domain  <fyi.com>;

 

2.   As early as August 15, 2002, Complainant started operating an online social networking community under the trademark FYI.  Complainant filed five trademark applications with the U.S. Patent and Trademark Office (“USPTO”) for FYI in connection with the various services it offers to users of its online community.  Complainant’s first FYI mark registered with the USPTO on June 24, 2003;

 

3.   Complainant and Respondent met on July 10, 2003 in California to discuss the possible transfer of the domain <fyi.com>.  After the meeting, Complainant and Respondent had several phone call communications regarding the possible sale but the two parties did not reach an agreement;

 

4.   Except a March 2000 Business Plan and some sporadic e-mails that at best implied the possible use of the domain <fyi.com>, Respondent did not provide any other evidence showing that it has used or has prepared to use or is going to use the domain <fyi.com>;

 

5.   Complainant requests that the domain name be transferred from Respondent to Complainant and Respondent claims that Complainant commited reverse domain name hijacking.

 

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.

 

It has been well established that for a Complainant to establish rights over the mark under Policy ¶ 4(a), Complainant must prove that its rights pre-date Respondent’s registration of the domain name.  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a) necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a) of the Policy.”); Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).  As the above factual recitation discloses, Respondent acquired the domain <fyi.com> on May 22, 2000, which is earlier than the Complainant’s registeration date, filing date, and first use date for the mark FYI.  Therefore, Complainant can not satisfy Paragraph 4(a) of the Policy. 

 

With regard to Respondent’s reverse domain name hijacking claim against Complainant, this Panel finds such a claim is without merit. To succeed on a reverse hijacking claim, Respondent must prove that Complainant  knew of Respondent’s right in the disputed domain name or clear lack of bad faith registration and use and nonetheless filed the complaint against Respondent.  Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO, May 7, 2001).  Further, to prevail on a reverse domain name hijacking claim, the bad faith conduct by the Complainant should be “utterly clear.”  Great American Insurance Company v. Ron Hamilton, FA109753 (Nat. Arb. Forum Oct. 14, 2002).  In this case, considering Complainant’s trademark rights, the similarity between the domain <fyi.com> and Complainant’s trademark, the lack of transparency of the date of Respondent’s acquisition on the domain <fyi.com>, this Panel cannot be convinced that Complainant acted in bad faith and attempted to abuse the Policy.

 

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel further concludes that Respondent’s claim for reverse domain name hijacking shall be DENIED.

 

 

 

 

___________________________________________________

Estella S. Gold, Chair, writing for the Panel,

Honorable Carolyn M. Johnson, and

David E.Sorkin, as Panelists

Dated: December 12, 2006