Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Informed Investors , Roseville, CA, USA ("Complainant") represented by David M Edwards, Informed Investors, Inc. The Respondent is Kostech Corporation, Reno, NV, USA ("Respondent").

The domain name at issue is informedinvestor.com, registered with Network Solutions.

This is a domain name dispute proceeding pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). A three person arbitration panel was requested; this panel consists of Chairman, Judge Nelson A. Diaz (Retired), of Philade lphia, PA, Judge Irving Perluss (Retired), of Sacramento, CA and Jeffrey Samuels of Copley, OH. Each panelist has confirmed to the National Arbitration Forum that they have acted independently and impartially and to the best of their knowledge, have no kn own conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 14, 2000; The Forum received a hard copy of the Complaint on September 12, 2000.

On September 18, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name informedinvestor.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verifie d 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 UDRP.

On September 20, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 10, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Re spondent 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@informedinvestor.com by e-mail.

On November 1, 2000, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, the Forum appointed the above-named Panelists.

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

The trademark on which the complaint is based is INFORMED INVESTORS (the "Mark"). The Mark is owned and maintained by Complainant. Complainant was founded in March 1993. Complainant has used the Mark continuously in commerce since April 1993. On Ma rch 27, 1997, Complainant registered the domain name <informedinvestors.com>. Subsequently, Complainant launched a commercial web site located at www.informedinvestors.com.

Respondent registered the domain name <informedinvestor.com> on August 7, 1998. On August 12, 1998, Respondent filed a certificate of business for the fictitious names of Informed Investor and Informedinvestor.com. By letter dated August 14, 1998 , Complainant asked that Respondent cease and desist from any further use of the informedinvestor.com domain name and www.informedinvestor.com web site. Complainant specifically stated that such use would lea d to confusion. Respondent refused, stating "I appreciate your concerns, but on the Internet these things happen." Thereafter, Respondent expended substantial efforts and money to develop its own web site.

Both Complainant and Respondent unsuccessfully sought to obtain federal trademark registrations for their respective marks. In each instance, the examining attorney for the Patent and Trademark Office refused registration based on the finding that the respective marks were confusing similar to a previously registered trademark and were, in any case, descriptive.

To obtain the requested relief, paragraph 4(a) of the Policy requires the Complainant to prove each of the following:

While Complainant satisfies the first requirement, the same can not be said of the second and third requirements of Paragraph 4(a). Respondent avers that it has made a legitimate use of the disputed domain name. In particular, Respondent asserts that i t has used its domain name for a completely distinct segment of the financial services market place and that there is no proof of any intent to infringe upon any rights that Complainant may have in its Mark.

While there is no question that Complainant is the senior user of the Mark, significant questions remain unanswered with respect to whether Respondent’s use violates Complainant’s trademark rights. In particular, the Complainant has submitted little or no evidence of secondary meaning that would entitle it to broad protection for what is admittedly a highly descriptive mark. Moreover, little evidence was proffered with regard to the proximity of the services offered by the parties and whether when such services are sold under a similar mark, there was a likelihood of confusion. The Panel finds that Complainant has not met its burden of proof with regard to the second prong under paragraph 4(a).

Although Complainant questions Respondent’s intentions in registering and using a domain so similar to Complainant’s Mark appear to be somewhat suspect, unresolved questions about the scope of the Complaint’s rights in the Mark and the likelihood of co nfusion, prevent the Panel from finding that Respondent acted in bad faith, i.e. that its registration and use of the domain name <informedinvestor.com> violates Complainant’s rights.

The Panel concludes: (a) that the domain name <informedinvestor.com> is confusingly similar to Complainant’s trademark; (b) that Complainant has not met its burden of proving that Respondent has no rights or legitimate interest in the domain name; and (c) that Complainant has not met its burden of proving that Respondent registered and used the domain name in bad faith. Therefore, pursuant to the Policy and the Rules, the Panel

denies Complainant’s request that the domain name <informedinvestor.com> be transferred.

Honorable Nelson A. Diaz (Ret.), Chief Panelist

Honorable Irving Perluss (Ret.)Panelist

Date: November 14, 2000

While I concur in the Panel's decision, I wish to express my opinion that Complainant also failed to establish that it has rights in the INFORMED INVESTORS mark. The applicable Policy requires that the domain name in issue be identical or substanti ally similar to a mark in which Complainant has rights. While I agree that the domain name is substantially similar to the INFORMED INVESTORS mark, in my view, the evidence does not establish that Complainant has rights in the mark. Instead, the evidence, in particular the PTO Office actions, appears to support the opinion that INFORMED INVESTORS, as used by Complainant, is merely descriptive.

I further wish to express my concern regarding certain statements in the Panel's decision that might lead one to believe that the matter before us is one of trademark infringement. It is not. The matter is no more or less than whether Complainant has m et the requirements of the applicable Policy.

Jeffrey Samuels, Esq., Panelist

Date: November 14, 2000