Generic Top Level Domain Name (gTLD) Decisions

InfoGear Technology Corporation,

Complainant

v.

iPhones,

DOMAIN NAME DISPUTE DECISION
Case Number: : FA0003000094369

The above entitled matter came on for hearing on April 13, 2000 before Tyrus R. Atkinson, Arbitrator, on the Complaint of InfoGear Technology Corporation, hereafter "Complainant" against iPhones, hereafter "Respondent". Complainant is represented by Alison B. Shames of the firm of Howard, Rice, Nemerovski, Canady, Falk & Rabkin, Three Embarcadero Center, 7th Floor, San Francisco, California 94111. Respondent is represented by Thomas Gruenbeck of the firm of Gruenbeck & Vogler, 7700 Irvine Center Drive, Suite 800, Irvine, California 92618. Upon the written Record, the following decision is made.

PROCEDURAL FINDINGS

An administrative proceeding was commenced by Complainant against Respondent pursuant to the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

The Complaint filed by Complainant against Respondent was certified to have been served upon Respondent on January 27, 2000. The Complaint was received by the National Arbitration Forum on March 20, 2000. Commencement of Administrative Proceedings began on February 1, 2000. The National Arbitration Forum sent the Complaint and notification to Network Solutions, Inc. on April 3, 2000.

Respondent filed its Response within the required time forming the issues to be decided in this case.

Network Solutions, Inc. verified that it is the Registrar of the domain name "iPhones" and that the Registrant was "iPhones (IPHONES-DOM). The registration was created on November 18, 1999. Registrant's address is P.O. Box 1300, Artesia, CA 90702-1300.

Registrant is bound by the Network Solutions, Inc. Service Agreement Version 4.0.

The National Arbitration Forum complied in this case with the procedural requirements set out in the Policy and Rules adopted by ICANN.

STATEMENT OF THE CASE

Complainant contends that it markets an advanced telephone under the name iPhone. It contends that it hold trademarks on the names IPHONE and I PHONE with the United States Patent and Trademark Office. It further contends that it has used the name since June 6, 1997. It contends that it has registered the mark IPHONE in foreign countries and has pending applications in other foreign countries. Complainant contends that Respondent registered the domain name for the purpose of selling it either to Complainant or a competitor of Complainant. It contends that the registration was done in bad faith and that the domain name should be transferred to Complainant.

Respondent contends that the registered domain name iPhones.com is not identical or confusingly similar to the registered mark because of the letter "s" attached at the end of the domain name. Respondent contends that the domain name does not dilute Complainant's mark. Respondent contends that it is legitimate to register a domain name for the purpose of later reselling the name to another. Respondant contends that since it did not direct the sale of the domain name solely to the Complainant, but instead offered to sell the name in an internet auction, that it acted properly. It further contends that because of the timing of the domain name registration and publication by the trademark office, that there is no evidence to show that Respondent could have known about the trademark application at the time of registration of the domain name. Respondent contends that reserving domain names of common usage for sale at a later time to others who may benefit from possession the name constitutes legitimate conduct.

FINDINGS OF FACT

1. Complainant holds a trademark for the name "IPHONE" registered by the United States Patent and Trademark Office on November 16, 1999.

2. Complainant holds the trademark "I PHONE" registered with the United States Patent and Trademark Office on November 10, 1998.

3. Complainant registered the mark "IPHONE" in the European Union on May 25, 1999.

4. Complainant registered the mark "IPHONE" in New Zealand on April 15, 1998.

5. The mark was first used in commerce by Complainant as early as June 6, 1997.

6. Complainant markets a telephone device under the name "iPhone."

7. The inference is drawn from the record that Complainant has expended time, effort and money in promoting the names "iPhone", IPHONE, and I PHONE, in connection with its business and the goods and services offered by Complainant.

8. Respondent acquired the domain name "iPhones.com" with the intent to sell the domain name to a third party.

9. Respondent concedes that it acquired the domain name with the intent and purpose of selling it for a profit.

10. Respondent did put the domain name up for sale by auction on or about February 4, 2000. Complainant received an email informing it that "iPhones.com" was listed in the said auction and inviting Complainant to participate in the auction. The email received by Complainant noted that the minimum bid for the sale of "iPhones.com" was $6,500.00.

11. Respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of Respondent's out of pocket costs directly related to the domain name.

12. Respondent has not used, or prepared to use the domain name in connection with a bona fide offering of goods or services other than the sale of the domain name itself.

13. No evidence exists in the record to show that Respondent has been known by the domain name.

14. No evidence exists egal rights and to which Respondent has failed to show a legitimate right or interest.

15. Respondent has no legitimate or valid interest in the domain name other than to hold the domain name for sale to third parties.

CONCLUSIONS

1. The domain name "iPhones.com" registered by Respondent with Network Solutions, Inc. is so close as to be identical or confusingly similar to Complainant's "IPHONE" and "I PHONE" Marks, to which Complainant has legal rights and to which Respondent has failed to show a legitimate right or interest.

2. Respondent acted in bad faith by registering and acquiring the domain name "iPhones.com".

DECISION

THE DOMAIN NAME "iPhones.com" REGISTERED BY RESPONDENT, iPhones (IPHONES-DOM), BE TRANSFERRED TO COMPLAINANT, InfoGear Technology Corporation.

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this case. The undersigned certifies that he was impartial and decided the case on the written record presented for decision.

This 13 day of April, 2000.

__________________

Tyrus R. Atkinson