DECISION

JP Systems, Inc. v. Infobeam

Claim Number: FA0011000096100

PARTIES

The Complainant is JP Systems, Inc., Dallas, TX, USA (“Complainant”) represented by Cami Dawson Boyd, Jackson Walker L.L.P.  The Respondent is Infobeam, Rego Park, NY, USA (“Respondent”) represented by Douglas Kahan, Kahan & Kahan.

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 20, 2000; The Forum received a hard copy of the Complaint on November 20, 2000.

On November 29, 2000, Network Solutions, Inc. confirmed by e-mail to The Forum that the domain name infobeam.com is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 November 29, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 19, 2000 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@infobeam.com by e-mail.

On December 19, 2000, Respondent filed a Response, which was timely.

On December 22, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the domain name at issue has been registered by the Respondent in bad faith, that the Respondent has made no legitimate use of the domain name, and that the domain name is identical to the Complainant’s mark.

B. Respondent

The Respondent contends that the domain name is not identical or confusingly similar to Complainant’s mark, that it has rights and a legitimate interest in the name and that it did not register the domain name in bad faith.

FINDINGS

The Complainant is engaged in the business of designing and marketing web-to-wireless applications in the consumer retail market.  The Respondent is a consulting firm specializing in web data base development and is not involved in retail sales. 

The Complainant has registered and maintains a website known as "infobeam.net" to promote its products and services.  This site was registered in 1999, three years after the respondent registered the domain name at issue.

DISCUSSION

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.

Identical and/or Confusingly Similar

Even though the domain name is identical to Complainant’s mark, it does not mean that the Complainant would have exclusive rights to said mark..  See Smart Design, LLC v. Carolyn Hughes, D2000-0993 (WIPO October 18, 2000) (the test under paragraph 4(a)(i) of the Policy, which makes no mention of  "exclusive rights" is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that the Complainant has a bona fide basis for making the Complaint in the first place.)

Further, no confusion should be created as (1) the parties are not engaged in the same business and (2) the Complainant’s failure to take action against Respondent for almost four years suggests that there is no confusion.

Rights or Legitimate Interests

The Respondent filed a business certificate in 1995 with the State of New York  and also applied for a Federal Tax Identification number at that time.  In order to promote any business venture, the name must come first.  VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the Respondent has rights and a legitimate interest in the domain name since the domain name reflects the Respondent’s company name).

In addition, Respondent registered the domain name at issue in 1996, and has been continuously working on its web site since that time.  It is clear that the Respondent intends to use the site in connection with a bona fide offering of goods or services.  See PRIMEDIA Special Interest Publications Inc. v. John L. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (finding that the Respondent has rights in the domain name because he has made 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).

Registration and Use in Bad Faith

In the four years preceding the filing of this action, the Complainant has not contacted the Respondent regarding the registration.  The Respondent was unaware of the issues set forth in the Complaint until it was served with same.  The Complainant requested that the Respondent sell them the domain name.  It appears that it was not the Respondent’s desire to register and then sell the domain name. 

The Respondent has not prevented the Complainant from reflecting its mark in a corresponding domain name.  There appears to be a registration for "infobeam.org" and the Complainant holds "infobeam.net" thereby allowing them to reflect their mark in a corresponding domain name.  The Complainant’s application for the mark "infobeam.com" postdates by nearly four years Respondent’s registration of the domain name.

As the Respondent does not engage in the same type of business as the Complainant and are not direct competitors of Complainant, it appears that it is not the Respondent’s intention to disrupt the Complainant’s business or attract its customers.  By its own admission, the Complainant states that there have been no problems to date, but they may or will occur in the future.  Unless such a disruption has occurred, this arbitrator cannot support a finding on the issue of bad faith.  See Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug 21, 2000) (finding no bad faith where even though Respondent’s ownership and purported use of the domain name frustrates Complainant’s efforts, the record does not indicate any purpose or intent on the part of the Respondent to prevent Complainant from reflecting its mark in a corresponding domain name, to disrupt the business of a competitor, or to intentionally attract the customers of Complainant to Respondent’s site by creating a likelihood of confusion).

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have NOT been satisfied, it is the decision of this panelist that the requested relief be DENIED.

Honorable Paul A. Dorf (Ret.)

Dated:  January 5, 2001

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2001/21.html