Generic Top Level Domain Name (gTLD) Decisions

THE NATIONAL ARBITRATION FORUM

P.O. BOX 50191

MINNEAPOLIS, MINNESOTA 55405 USA

FaceTime Communications, Inc.
A Delaware corporation

Complainant,

vs.

Live Person, Inc.
665 Broadway, Suite 1200
New York, N.Y. 10012

Respondent.

DECISION

Forum File No.: FA0001000092048

The above entitled matter came on for an administrative hearing on February 18, 2000 before the undersigned on the Complaint of FaceTime Communications, Inc., hereafter "Complainant", against Live Person, Inc., hereafter "Respondent". Complainant was represented by Paul E. Fahrenkopf, Esq., 1401 Eye Street, NW, Suite 500, Washington, D.C., 20005. There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:

Procedural Findings

Domain Name: facetime.com

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Live Person, Inc.

Date of Domain Name Registration: January 4, 2000

Date Complaint Filed: January 14, 2000

Date of Commencement of the Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c)¹: January 14, 2000

Due Date for a Response: February 7, 2000. Respondent did not submit a Response to the Complaint.

After reviewing the Complaint, and determining it to be in administrative compliance, the National Arbitration Forum (The Forum) forwarded the Complaint

to the Respondent on January 14, 2000 in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately notified Live Person, Inc., Network Solutions, Inc., the Internet Corporation for Assigned Names and Numbers (ICANN), and the Complainant that the administrative proceeding had commenced. Respondent did not submit a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On January 4, 2000, Respondent registered the domain name "facetime.com" with Network Solutions, Inc., the entity that is the Registrar of the domain name. On January 14, 2000, Network Solutions, Inc. verified that Respondent is the Registrant for the domain name "facetime.com", and that further by registering its domain name with Network Solutions, Inc., Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

FINDINGS OF FACT

1. Complainant has been using FACETIME since November, 1998 in connection with providing services that enable businesses to manage their voice, text, fax, e-mail and other communications, and otherwise administer their applications and communications with features for tracking and reporting purposes (including trends, patterns, and customer behavior), and, consulting services related thereto, evidence by Complainant’s web site, which reflects Complainant’s use of FACETIME in relation to these services.

2. Complainant, FaceTime Communications, Inc., is the owner of a U.S. federal

trademark registration (Registration No. 2,296,859) issued November 30, 1999 for the trademark FACETIME for "computer software used for communicating over global computer networks using voice, text, fax, or e-mail". Complainant’s U.S. registration for FACETIME was filed on February 23, 1998 and registered on November 30, 1999, both prior to Respondent becoming the record owner of the domain name facetime.com, on January 4, 2000. Complainant’s use of FACETIME for its services, since November, 1998, predates Respondent’s ownership of the subject domain name (January 4, 2000).

2. Complainant is also the owner of a U.S. federal trademark application to register FACETIME.COM for "providing services that enable businesses to manage their voice, text, fax, e-mail and other communications, and otherwise administer their applications and communications with features for tracking and reporting purposes (including trends, patterns, and customer behavior); and, consulting services related thereto". This application was filed on December 15, 1999 and has not yet been assigned a serial number.
3. Complainant and Respondent are involved in the same business of offering customer service solutions to companies with web sites that enable customer service calls to be handled by real people interacting with customers in real time. Use of marks, which are so similar for the same services confuse the public and those desiring to obtain a particular entity’s services and products. Complainant is aware of e-mails intended for Complainant, which have been mistakenly sent to Respondent who has not forwarded those messages to Complainant. This gives an unfair competitive advantage to Respondent through its ownership of a domain name, which is likely to result in misdirected inquiries and messages. This is one method available to interfere with a competitor’s business relations.
4. There have been no other legal proceedings that have commenced or terminated in connection with or relating to the domain name which is the subject of this complaint.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected, and being impartial, the undersigned makes the following findings and conclusions:

1. The domain name "facetime.com", registered by Respondent on January 4, 2000 with Network Solutions, Inc. is identical to Complainant’s FACETIME.COM mark which is the subject of a pending U.S. Federal trademark application filed on December 15, 1999, and not yet assigned a serial number.
2. The domain "facetime.com" registered by Respondent on January 4, 2000 with Network Solutions, Inc. is virtually identical and confusingly similar to Complainant’s federally registered trademark "FACETIME", Registration No. 2,296,859, issued November 30, 1999.
3. Respondent has no rights or legitimate interests in respect of the domain name "facetime.com". Respondent has demonstrated a pattern of conduct that interferes with Complainant’s right to conduct business. The domain name has been registered and is being used by Respondent in bad faith.

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME facetime.com REGISTERED BY RESPONDENT, Live Person, Inc., BE TRANSFERRED TO COMPLAINANT, FaceTime Communications, Inc.

Dated: February 18, 20000