Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Complainant is InfoSpace.com, Inc., a Delaware corporation located in Redmond, Washington, USA.

Respondent is Brian Pianfetti, an individual located in Champaign, Illinois, who has registered the domain name through Delighters, Inc.

The domain name is <myinfospace.com>.

The registrar is Network Solutions, Inc.

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").

The complaint was filed on February 17, 2000. The Response was filed on April 10, 2000. Mark V.B. Partridge was appointed as the single panelist.

Complainant is a provider of internet content, such as directory services, maps, classified advertisements, stock quotations, local business information, weather forecasts and horoscopes. Complainant has registered the domain name <infospace.com> and operates a web site at that address. Complainant is also the owner of several U.S. registrations and applications for the INFOSPACE mark, including Reg. No. 2,121,439, dated December 16, 1997, and Reg. No. 2,206,397, dated December 1, 1998. The later registration provides Complainant with nationwide rights as of November 4, 1996, the filing date of the application.

According to his well-documented submission, including a sworn affidavit and exhibits, Respondent is a Visiting Assistant Professor in the Education Psychology Department of the University of Illinois at Champaign-Urbana. He operates an educational web page about outer space at <myinfospace.com>. He began working on the content of his site in 1998, and has submitted directories of the relevant computer files showing work begun at that time. When he registered the domain name in January 1999, he was not aware of Complainant or its web site, although he had constructive notice of its trademarks as a matter of law. Although Respondent’s web site has links to commercial sites affiliated with movies and television shows about space, his site is not commercial and there are no outside sponsors.

Complainant contends that respondent has registered the <wwwinfospaces.com> domain name for the purpose of trading on Complainant’s name and mark. Although Complainant concedes that the content of Respondent’s site is "facially benign information about astronomy and science fiction," it suggests that differences between the parties respective use of their domain names is not readily discernable "absent perscrutation" of Respondent’s web site.

Respondent contends that it adopted the domain name in good faith for a non-commercial purpose and is not trading on Complainant’s name or mark.

To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:

(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) that the respondent has no rights or legitimate interest in the domain name; and

(3) the domain name has been registered and used in bad faith.

In this case, the domain name registered by Respondent is not identical to the registered trademarks of Complainant.

The question then is whether the name and marks are confusingly similar. The Policy does not specify whether this determination is based on the name alone or on the overall manner of use of the name. I therefore look elsewhere for guidance. The U.S. Anti-Cybersquatting Consumer Protection Act includes a similar issue as one of the elements of a Cybersquatting claim. In recent decisions, the federal courts have concluded that the element is determined by comparing the mark and name alone, independent of the other marketing and use factors usually considered in a traditional infringement action. See Northern Light Technology, Inc. v. Northern Lights Club, 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000). I think the same approach is appropriate in evaluating the first element of a claim under the Policy.

Applying that principle here, I find that <myinfospace.com> is confusingly similar to <infospace.com>. The salient feature of each is "infospace." The addition of "my" is likely to by Internet users as something related to "infospace." Indeed, the practice seems to be prevalent on many portal sites and is a feature of Complainant’s site.

Under Paragraph 4(c) of the Policy, evidence of a registrant’s rights to and legitimate interest in the domain name includes:

(1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(2) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(3) legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

Here, there is ample evidence that Respondent made demonstrable preparations to use the domain name in connection with a bona fide offering of services prior to the dispute. Moreover, it appears that Respondent is making legitimate noncommercial use of the domain name without an intent to divert consumers or tarnish the trademarks of Complainant. Therefore, I find that Complainant has failed to show that Respondent lacks a legitimate right or interest in the domain name.

Complainant relies on Paragraph 4(b)(iv) of the Policy, which states bad faith registration and use may be shown "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark . . .".

The evidence here does not support a finding of bad faith use and registration in this case. Complainant concedes that the content of Respondent’s site is "benign" information about astronomy and space, educational subjects that are not related to Complainant. The links to television shows and movies do not alter this dissimilarity. Respondent’s site is directed to school children. It appears unlikely that the similarity in names was designed to attract Respondent’s target users to his site based on confusion with Complainant’s mark and services.

I find in favor of Respondent and deny Complainant’s request for relief under Paragraph 4(i) of the Policy.

Mark V. Partridge
Presiding Panelist

May 1, 2000