DECISION

 

Fios, Inc v. Falcon Interactive Online Systems

Claim Number: FA0109000099720

 

PARTIES

Complainant is Fios, Inc., Portland, OR (“Complainant”) represented by Adam D. Ross, of Lane, Powell, Spears, & Lubersky LLP.  Respondent is Falcon Interactive Online Systems, Wheaton, IL (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

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

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on September 17, 2001; the Forum received a hard copy of the Complaint on September 20, 2001.

 

On September 19, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <fios.com> is registered with Network Solutions, Inc. and that the 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 24, 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, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@fios.com by e-mail.

 

A timely response was received and determined to be complete on October 15, 2001.  Complainant’s additional submission was timely filed on October 19, 2001.

 

An additional submission was received from Respondent, on October 23, 2001, without the required filing fee and without being properly served to Complainant.  This submission was not considered by the Panel.

 

On October 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

1.                  The disputed domain name – <fios.com> – is identical to Complainant’s FIOS, FIOS and Design (1) and FIOS and Design (2) trademarks and is confusingly similar to Complainant’s IO-FIOS trademark.

 

2.                  Respondent has no rights or legitimate interests with respect to the disputed domain name.

 

3.                  The disputed domain name has been registered and is being used in bad faith.

 

B. Respondent

1.                  The disputed domain name has been in continuous use since 1997, long prior to the Complainant’s use of the mark.

 

2.                  Any offer to sell the domain name to Complainant was only in response to an inquiry initiated by Complainant’s employees.  Respondent never intends to sell any of the domain names registered to him and expects to use every one in some way in the future.

 

C. Complainant’s Response to Respondent’s Submission

1.                  The materials provided by Respondent to support his claim that he has made continuous use of the disputed domain do not demonstrate that Respondent has used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services.

 

2.                  Respondent raised the prospect of selling the <fios.com> domain to Complainant for several hundred thousand dollars during his first conversation with Complainant’s employee.  Respondent’s offers to sell the domain name for valuable consideration in excess of documented  out-of-pocket costs are strong evidence of Respondent’s bad faith registration of the disputed domain.

 

3.                  Respondent’s vague assurances that he expects to use every one of his two hundred sixty domains in some way in the future are insufficient to establish demonstrable preparations to use Respondent’s numerous domains, including the disputed domain name, in connection with any bona fide offering of goods or services.

 

4.                  Respondent’s use of <fios.com> is likely to cause confusion, mistake or deception when customers and others encounter any <fios.com> website maintained by Respondent.

 

5.                  Complainant has not made any improper attempt to transfer Respondent’s current registration for <fios.com>.

 

FINDINGS

The Panel finds for the Respondent, and determines that the domain name <fios.com> should not be transferred to the Complainant.

 

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

Respondent has been using the domain name since 1997, long prior to Complainant’s use of the term.  See Interactive Television Corp. v. Noname.com, D2000-0358 (WIPO June 26, 2000) (finding that “[S]erious questions as to whether Complainant has any proprietary rights require us to reject Complainant’s claim. The ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal”).

 

Rights or Legitimate Interests

The domain name had been in use prior to Complainant’s trademark registration.  See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because the Respondent’s use of the mark, “parachute”, and the domain name in question preceded any use of the service mark by Complainant).

 

Registration and Use in Bad Faith

Complainant has failed to meet the burden of proving bad faith registration and use.  See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000) (finding no bad faith even though Respondent’s ownership and purported use of the domain name <goldmasters.com> frustrates Complainant’s efforts where the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

 

DECISION

Complainant’s request for transfer of the domain name <fios.com> is hereby denied.

 

 

John J. Upchurch, Panelist

 

Dated:  November 20, 2001