DECISION

 

Internet Billing Company, Ltd. v. This Domain Name For Sale

Claim Number: FA0108000099069

 

PARTIES

The Complainant is Internet Billing Company, Ltd., Ft. Lauderdale, FL (“Complainant”) represented by Robert C. Kain, of Fleit, Kain, Gibbons, Gutman & Bongini.  The Respondent is This Domain Name For Sale, Groveland Station, NY (“Respondent”) John H. Beaumont, of Rowley, Forrest, O'Donnell & Beaumont, PC.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ibillonline.com>, registered with NameSecure.

 

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 August 14, 2001; the Forum received a hard copy of the Complaint on August 15, 2001.

 

On August 16, 2001, NameSecure confirmed by e-mail to the Forum that the domain name <ibillonline.com> is registered with NameSecure and that the Respondent is the current registrant of the name.  NameSecure has verified that Respondent is bound by the NameSecure 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 August 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 5, 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@ibillonline.com by e-mail.

 

A timely response was received and determined to be complete on September 5, 2001.

 

Complainant’s timely Additional Submission was received and determined to be complete on September 11, 2001.  Respondent’s timely Additional Submission was received and determined to be complete on September 17, 2001.  Complainant’s exhibits to its Additional Submission, it is charged, were not timely received by Respondent.  Nevertheless, they were considered by the Panelist.

 

On September 21, 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 Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.         Complainant, Internet Billing Company, Ltd. (herein “iBill”), has provided Internet billing and collection and computer consulting services under the service or trademark “IBILL” since 1995.  iBill used IBILL and IBILL.COM as service marks for its billing and collection services, and the domain name <ibill.com> in interstate commerce continually since at least 1995.

 

            2.         iBill owns U.S. Trademark Registration No. 2,143,923 for the IBILL.COM mark for billing and collection services rendered to others, business management services, and computer consulting services (March 17, 1998.)  Further, iBill owns U.S. Trademark Registration No. 2,247,225, the IBILL/Internet Billing Company and Design logo mark for such services (May 25, 1997.)  iBill owns U.S. Trademark Registration No. 2,216,085 for the stylized “i” Design logo for these and other services (January 5, 1999.)

 

            3.         iBill has also substantial common law rights to the marks IBILL, IBILL.COM and IBILL and Design logo mark through its long and continuous use of such service marks in interstate commerce in connection with its billing, collection, bill analysis and other services.

 

            4.         iBill has made significant investments in promotion and research and development to assure the quality and innovation of its Internet billing and collection services provided under its IBILL Marks.  As a result of these efforts, iBill has generated considerable goodwill and consumer recognition for the quality and convenience of services provided under the IBILL Marks.  IBill enjoys a good reputation for the quality of its services.  Through iBill’s efforts and its exclusive use and promotion of the IBILL Marks, these marks have become famous.  The IBILL Marks are famous and distinctive.

 

            5.         Respondent, This Domain Name For Sale (herein “DNFS”), registered <ibillonline.com> on May 3, 2000, long after iBill began using its IBILL Marks in 1995, after iBill registered its federal trademark IBILL.COM, and after iBill’s federal trademark rights to IBILL.COM were established under federal trademark law.

 

            6.         Respondent DNFS does not use the disputed domain name for any purpose.  The domain <ibillonline.com> links to the Afternic.com Domain Name Auctions page, which shows that DNFS is auctioning the domain.  DNFS does not use the domain in any other manner.

 

            7.         DNFS is in the business of registering and selling domain names, including domains of federally registered trademarks.

 

            8.         The domain name is identical or confusingly similar to the federally registered service mark owned by Complainant iBill.  (ICANN Rule 3(b)(ix)(1); Policy Paragraph 4(a)(i).)

 

            9.         Respondent DNFS has no rights or legitimate interests with respect to the domain name that is the subject of the complaint.  (ICANN Rule 3(b)(ix)(2); Policy Paragraph 4(a)(ii).)

 

            10.       DNFS has never used the domain <ibillonline.com>.

 

            11.       Before any notice to the Respondent of this dispute, Respondent did not use, or make demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.  (Policy Paragraph 4(c)(i).)

 

            12.       Respondent has not been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights. (Policy Paragraph 4(c)(ii).)

 

            13.       Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.  (Policy Paragraph 4(c)(iii).)

 

            14.       The domain name should be considered as having been registered in bad faith.  (ICANN Rule 3(b)(ix)(3); Policy Paragraph 4(a)(iii).)

 

            15.       It has been held that a respondent has constructive knowledge of a duly registered mark and that this constructive knowledge negates rights or legitimate interests on the part of a registrant who registers a domain name subsequent to the registration of a trademark and this constructive knowledge is evidence of bad faith registration of the domain.

 

            16.       DNFS has never used the disputed domain name.  Passive holding of a domain is evidence of bad faith.

 

            17.       Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct.  (Policy Paragraph 4(b)(ii).)

 

            18.       Upon use of the domain name, Respondent will intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.  (Policy Paragraph 4(b)(iv).)

 

B. Respondent

            1.         The domain name in question is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.  Respondent’s registered domain name is <ibillonline.com>, while Complainant’s trademark registration is for “IBILL.COM.”  The additional word or words “online” clearly distinguish Respondent’s domain name so that no reasonable argument can possibly be made that the two are “identical,” nor even “confusingly similar.”  Complainant’s argument that consumers “customarily” drop an “online” designation is without any cited, or indeed any factual, basis.

 

            2.         Respondent has rights or legitimate interests in the domain name <ibillonline.com>.  Complainant admits in its complaint that Respondent registered the domain name in question on May 3, 2000, and that Complainant made no attempt to register any variation of <ibillonline.com> until June 13, 2001, when it registered <ibillonline.net> and <ibillonline.org> – clearly in recognition of the fact that <ibillonline.com> had already been legitimately registered, and also a blatant effort at “cybersquatting” by Complainant, attempting to appropriate Respondent’s protected terminology.

 

            3.         Respondent has at all times had every intent of utilizing the registered domain name.  Unfortunately, shortly after it was registered, he became ill with what was ultimately diagnosed as a potentially fatal liver disease, requiring chemotherapy/drug therapy which continues to this day, and which has delayed his plans to utilize the domain name.

 

            4.         The domain name has not been registered in bad faith.  Complainant has incorrectly and misleadingly attempted to identify Respondent as “This Domain Name For Sale.”  Respondent has never been known by or used that name.

 

            5.         Respondent has provided documentary evidence that a number of the listings of “This Domain Name For Sale” are, in fact, owned by a Panama City, Panama, company or individual.  The “This Domain Name For Sale” appellation is, in fact, somewhat generically utilized when a name is listed for sale on an auction service such as that listed by Complainant in its search.

 

            6.         Respondent did not register the domain name with the intent of profiting by auctioning the domain name or offering it to Complainant.  Complainant’s argument is not only without foundation, it is specifically disproven.

 

            7.         Respondent is certified as an ordained minister, and he has been a successful applicant to become a foster parent.

 

C. Complainant’s Additional Submission

            1.         The disputed domain name is confusingly similar to Complainant’s mark IBILL, and the courts disregard generic additive terms such as “online.”

 

            2.         Under the Federal Trademark Dilution Act (15 U.S.C. §1125(c)(1), Complainant’s mark is famous.

 

            3.         Respondent has submitted no evidence demonstrating that he has rights a legitimate interest in the disputed domain name other than it was registered on May 3, 2001, and he became ill thereafter.

 

            4.         Respondent did register and use the disputed domain name in bad faith.  Respondent acknowledges that the domain name was listed as being “up for auction” and available for sale. Posting the name for sale is evidence of bad faith use and bad faith registration.

 

            5.         The failure accurately to identify the owner of the disputed domain name <ibillonline.com>, and the acknowledgment by Respondent that the listed domain name owner is incorrect are indications that the domain is “up for sale.”  Moreover, the presence of the domain <ibillonline.com> on an auction website (Afternic.com) is clearly evidence of bad faith.  It is bad faith to improperly identify the domain name owner.  See Anticybersquatting Consumer Protection Act (15 U.S.C. §1125(d)(1)(B)(i)(VII), and it is an act of bad faith to affirmatively place before the public an offer to sell a domain name.

 

D.  Respondent’s Additional Submission

            1.         Respondent’s illness was cited not to create a legitimate interest in the disputed domain name, but to explain why he has not been able to develop sites for many of the names he has registered.

 

            2.         Respondent has done a significant amount of development for the portal of “cyberpath mall.”  He will develop sites for all or most of the names he has registered as his energy and resources allow.

 

            3.         Respondent registered the disputed domain name in good faith with every intent to develop a website.  He has never attempted to profit from any domain name, nor has he contacted Complainant to sell the disputed domain name.

 

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 Panel finds that the disputed domain name is confusingly similar to Complainant’s IBILL registered services mark under Paragraph 4(a)(i) of the Policy as it wholly contains Complainant’s famous service mark combined with the generic word “online.”[1]

 

It is to be noted, further, under Paragraph 4(a)(ii) of the Policy, that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use without intent for commercial gain.  Moreover, Respondent is not commonly known by the disputed domain name.  Thus, it has not demonstrated that it has rights or a legitimate interest in the disputed domain name.[2]

 

Finally, the Panel rejects Respondent’s contention that it did not register or use the disputed domain name in bad faith.

 

First, Respondent’s passive holding of the disputed domain name constitutes bad faith under Paragraph 4(a)(iii) of the Policy.[3]

 

It further appears that Respondent acted in bad faith pursuant to Paragraph 4(b)(i) of the Policy because Respondent offered the disputed domain name for sale on an auction site, and Respondent’s contact information indicates that it registered the disputed domain name with the intent of selling the domain name, as Respondent is known as “This Domain Name For Sale.”[4]

 

But, in any event, there is a legal presumption of bad faith, when, Respondent should have been aware of Complainant’s famous and distinctive trademark.  This is “constructive bad faith,” and it does not mean the Respondent is a bad person.[5]

 

In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9^th 1999) 184 F.3d 1107, 1111, it was said:

 

“However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX.’  Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive.  See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9^th Cir. 1993)).  In turn, intent to deceive is strong evidence of a likelihood of confusion.  Sleekcraft, 559 F.2d at 354.”

 

Finally, it could be argued that because of his illness, Respondent has not used the domain name in issue in bad faith, even though it was so registered.

 

The Panel heretofore has determined that Respondent has no rights or legitimate interest in the domain name, and that it has registered the name in bad faith.  It makes no sense whatever to wait until he actually “uses” the name, when inevitably, when there is such use, it will create the confusion described in the Policy.

 

Under the circumstances, a preliminary, mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened.  (Green Products Co. v. Independence By-Products Co. (N.D. Iowa 1997) 992 F.Supp. 1070.)  The threatened harm is “use.”

 

The Panel, thus, has determined that there is bad faith use by Respondent even though his website is not yet activated.

 

DECISION

Based on the above findings, conclusions and determinations, it is decided that the domain name <ibillonline.com> registered by Respondent “This Domain Name For Sale” shall be and the same is transferred to Complainant “Internet Billing Company, Ltd.”

 

 

JUDGE IRVING H. PERLUSS (Retired) Panelist

 

Dated:  October 5, 2001