DECISION

 

Touch Industries, Inc. v. Info Touch Corporation

Claim Number: FA0109000099658

 

PARTIES

Complainant is Touch Industries, Inc., Atlanta, GA (“Complainant”) represented by Valerie Walsh Johnson, of Baker, Donelson, Bearman & Caldwell.  Respondent is Info Touch Corporation, San Diego, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

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

 

PANEL

On October 2, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 31, 2001; the Forum received a hard copy of the Complaint on September 4, 2001.

 

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

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

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.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

The <infotouch.com> domain name is identical to Complainant's federally registered trademark.

 

Respondent has no rights or legitimate interests in the <infotouch.com> domain name.

 

Respondent registered and used the <infotouch.com> domain name.

 

B. Respondent

Respondent has failed to submit a response.

 

FINDINGS

Since February 1992, Complainant has used the mark INFOTOUCH in connection with its production and distribution of point-of-sale technology.  Complainant has expended large sums of money on advertising of its goods and services under the mark.

 

Complainant is the owner of the federally registered trademark INFOTOUCH, registered May 7, 1996 no. 1,972,269.  Prior to 1996, Complainant used the mark in relation to its goods and services as early as February 1992 and therefore had common law rights in the mark before Respondent registered the disputed domain name.

 

Respondent is a corporation named Homestore.com.  It registered the disputed domain name on February 9, 1996.  The disputed domain name <infotouch.com> is registered to Respondent without the permission of  Complainant who had common law Trademark rights in the mark INFOTOUCH at that time.  Respondent was previously known as Info Touch Inc., but subsequently changed its name to Homestore.com.  Respondent, as a result of the name change, is not commonly known by the name Info Touch.  Respondent has made no efforts to develop the domain into a website offering bona fide goods or services within the past six years. 

 

DISCUSSION

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.”

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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

Complainant, through common law use and federal registration of its INFOTOUCH mark, has established that it has rights in the mark.  Furthermore, the <infotouch.com> domain name is identical or confusingly similar to Complainant's mark in that the disputed name merely adds ".com" to the mark INFOTOUCH.  It is well established that merely adding ".com" does not defeat a claim of confusing similarity.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

The Panel has discretion to find that Respondent has no rights or legitimate interests in the disputed domain name where Respondent fails to submit a response.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

 

Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

 

Respondent's passive holding of the disputed domain name fails to demonstrate that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i).  Furthermore, not only has Respondent not sold or offered services from the site, Respondent has held the domain name for six years without even developing a website.   See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).

 

Furthermore, Respondent's name has no resemblance to the disputed domain name, nor is there any evidence on record that it is commonly known by the name <infotouch.com> pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

 

There is no evidence that demonstrates Respondent is making a legitimate noncommercial, or fair use of the <infotouch.com> domain name, pursuant to Policy ¶ 4(c)(iii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

 

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, and that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent's passive holding constitutes a finding of bad faith, pursuant to Policy ¶ 4(a)(iii).  See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4(a)(iii) of the Policy).

 

Furthermore, Respondent had knowledge of Complainant's registration of the INFOTOUCH mark when it registered <infotouch.com>.   It can be inferred that Respondent has registered a confusingly similar mark to Complainant's in an attempt to trade or achieve recognition from Complainant's well-known and well regarded name which is evidence of registration in bad faith pursuant to Policy ¶ 4(b)(iv).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <infotouch.com> domain name be transferred from Respondent to Complainant.

 

 

 James P. Buchele Panelist

 

Dated:  October 4, 2001

 

 

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