DECISION

 

American Information Corporation d/b/a American Information Network v. American Infometrics, Inc.

Claim Number: FA0105000097339

 

PARTIES

The Complainant is American Information Corporation d/b/a American Information Network, Calverton, MD, USA (“Complainant”) represented by Sherry H. Flax, of Saul Ewing LLP.  The Respondent is American InfoMetrics, Inc., Modesto, CA, USA (“Respondent”) represented by Donna Johnson, of Jacobs & Associates.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ainet.com>, registered with Network Solutions.

 

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.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 31, 2001; the Forum received a hard copy of the Complaint on June 1, 2001.

 

On June 1, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <ainet.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 June 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 26, 2001 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@ainet.com by e-mail.

 

A timely response was received and determined to be complete on June 26, 2001.

 

On June 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

            1.         Complainant AiNet is an Internet service provider that provides services to customers throughout the United States and the World.  AiNet maintains a site on the world wide web through which it provides Internet access, website housing, website design and website security services.  AiNet operates under the domain name ai.net.

 

            2.         AiNet has since May 1993 continuously used the service mark AINET in association with promoting, marketing and providing its services.  The United States Patent and Trademark Office granted federal registration to AiNet for the service mark AINET for Internet access and related services, U.S. Registration No. 2,315,722, issued on February 8, 2000.  The registration was granted based on AiNet’s first use of the AINET mark in interstate commerce in May 1993.

 

            3.         AiNet’s registration of its AINET service mark is prima facie evidence and constructive notice of its ownership of the mark.

 

            4.         AiNet has invested a substantial amount of money in, and the public has come to recognize, its AINET service mark as its indicia or origin, indicating that AiNet is the provider of its Internet access and related services.  AiNet has established a reputation and good will as to the excellence of services provided in connection with its AINET service mark.  Sales of its services under the AINET mark have exceeded five million dollars.

 

            5.         Respondent maintains a site on the worldwide web at ainet.com through which it promotes and provides its Internet access services, and the domain name so used is confusingly similar to Complainant’s mark.

 

            6.         Respondent’s sale of its services under the ainet.com Internet domain name has caused and is likely to cause the public to believe, contrary to fact, that the services are provided and are approved by AiNet.

 

            7.         By virtue of its ownership of the AINET service mark, AiNet owns all right, title and interest in and to the disputed domain name.

 

            8.         Respondent owns no right or legitimate interest in or to the disputed domain name.  Respondent’s registration and use of the disputed domain name were in bad faith and violates AiNet’s ownership rights in the disputed domain name.

 

B. Respondent

            1.         The stylized form of the mark registered to Complainant (AiNET) is not identical or confusingly similar to the domain name used by Respondent (ainet).

 

            2.         Respondent began using the ainet and aiNet marks at least fourteen months before Complainant’s first alleged use, and over six years before Complainant sought trademark registration for AiNet in stylized form.

 

            3.         Complainant knew or should have known of Respondent’s use of the ainet, AINET and aiNet marks, and the domain name, ainet.com, prior to the time it applied for federal trademark registration of AiNET in stylized form in July 1998.

 

            4.         Respondent has used and is using the disputed domain name in connection with a bona fide offering of goods or services.  In March 1992, Respondent circulated an advertising flyer indicating that its “new Internet division will be known as aiNet.”  Respondent continuously has provided services to customers using the name “ainet,” “AINET,” or “aiNET” since 1992.

 

            5.         Complainant has not demonstrated that Respondent registered and used the domain name in bad faith.  There is no evidence that Respondent acquired the disputed domain name for the purpose of selling it to Complainant.  Moreover, there is no evidence that Respondent registered the disputed domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, nor has it been shown that Respondent had registered the disputed domain name primarily for the purpose of disrupting the business of a competitor or attracting its customers.

 

DISCUSSION, FINDINGS AND DETERMINATIONS

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.

 

      The chronology of events in this proceeding is most important.  It is found as follows:

 

      March 9, 1992 – Respondent first used the name “aiNet.”

      March 9, 1992 to present – Respondent continuously used the names “ainet,” “AINET,” and “aiNet.”

      May 3, 1993 – Complainant first used the name “AiNET.”

      August 26, 1994 – Respondent registered the domain name “AINET.com.”

      July 20, 1998 – Complainant applied for federal trademark registration of “AiNET.”

      November 20, 1998 – Respondent received an Interim Designation of Agent to Receive Notification of Claimed Infringement from the Register of Copyrights, showing AI and AINET as alternative names under which it conducts business.

      July 7, 1999 – Complainant demanded that Respondent transfer ainet.com to Complainant.

      August 3, 1999 – Respondent refused to transfer ainet.com to Complainant.

      February 8, 2000 – Complainant received federal registration for the mark “AiNET.”

 

      It is found that the Complainant’s mark and the disputed domain name are confusingly similar, establishing the first element of Complainant’s charges.  (See National Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark); Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark.  The domain name <creampies.com> is similar in sound, appearance, and connotation”).)

 

      Nevertheless, the other two required elements present an obstacle that Complainant cannot overcome.

 

      First, Professor McCarthy teaches us that a “first-come-first-served” policy of a registrar “cannot trump federal [trademark] law.”  (4 McCarthy, Trademarks and Unfair Competition (4^th ed. Updated 6/2000) Section 25.73.3, pp.25-164 – 25-166.)

 

      Next we learn from him:

 

“Apart from the concept of a constructive use, it is not registration, but only actual use of a designation as a mark that creates rights and priority over others.  The United States, unlike many Civil Law nations, has a rule of priority that is based on first-to-use, not first-to-register.

 

Trademark ownership is not acquired by federal or state registration.  Ownership rights flow only from prior use, either actual or constructive.  As the Federal Circuit has observed: ‘The requirements of both adoption and use devolve from the common law; trademark rights in the United States are acquired by such adoption and use, not by registration.’  Apart from statutory constructive use, priority and ownership of a trademark are not governed by a race to the Patent and Trademark Office, but ‘[i]t is a race to the marketplace.’”  (2 McCarthy, supra, Section 16.18, p. 16-33, footnotes omitted.)

 

      Then, we are told:

 

“Neither application for nor registration of a mark at the federal level wipes out the prior non-registered, common law rights of others.  The non-registered rights of a senior user continue and are not trumped by the later federal registration of a junior user.”  (2 McCarthy, supra, Section 16.18.1, p. 16-34, footnotes omitted.)

 

      Complainant asks that we consider the Trademark Law Revision Act of 1988 which added Section 7(c) to the Lanham Act (15. U.S.C., Section 1057c), creating the concept of “constructive use.”  This Act does create a priority of use on the filing of a trademark application.  (2 McCarthy, supra. Section 16:17, p. 16-32.)  But that route is closed to Complainant because the common law rights of a senior user are preserved by the Lanham Act (U.S.C. Sections 1057(c)(1); 1065; 2 McCarthy, supra, Section 16:17, p. 16-32.)

 

      Finally, while the registration of a mark is prima facie evidence of the registrant’s ownership of the mark, and it is presumed that he first used the mark as of the filing date of a use-based application, Professor McCarthy cautions us, however:

 

“The registration, per se, is proof of use only as of its filing date, not the date of first use claimed in a use-based application.”  (2 McCarthy, supra, Section 16.19, p. 16-35, footnote omitted.)

 

      Having learned these principles of trademark law, the ultimate decision here is not difficult.  This is because it has been found that Respondent is the senior user of the disputed domain name and has continuously used the name from March 9, 1992, to the present.

 

      It was over a year later, in May 1993, that complainant first used the name “AiNET,” and its registration with the United States Patent and Trademark Office on July 20, 1998, establishes only use from that date.

 

      Moreover, the constructive use date resulting from registration does not help Complainant because Respondent has proved priority under the traditional rules of common law trademark priority.

 

      Because Respondent is the senior user, it follows that it has rights and a legitimate interest in the disputed domain name and that it did not register and/or use the disputed domain name in bad faith.

 

DECISION

Based on the above findings and conclusions, it is decided that the claim of Complainant to the domain name of “ainet.com,” be and the same is, denied.

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist

 

Dated: July 19, 2001