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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
Netfolio Inc. v Tantalus Investments
Claim Number: FA0102000096684
PARTIES
The Complainant is Netfolio, Inc., New York, NY, USA ("Complainant") represented by Hilary B. Miller. The Respondent is Tantalus Investments, Richmond, BC, CANADA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "enetfolio.com" registered with Register.com.
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.
Hon. Roger P. Kerans (ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 16, 2001; the Forum received a hard copy of the Complaint on February 19, 2001.
On February 20, 2001, Register.com confirmed by e-mail to the Forum that the domain name "enetfolio.com" is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 February 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 14, 2001 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@enetfolio.com by e-mail.
A timely response was received and determined to be complete on March 12, 2001.
On March 14, 2001 a timely additional submission was received from Complainant in compliance with the forum’s supplemental rule 7.
On March 19, 2001 pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Hon. Roger P. Kerans (ret.) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
Respondent’s second-level domain name ENETFOLIO.COM is confusingly similar to complainant’s registered service mark NETFOLIO® and confusingly similar to complainant’s own registered domain names which incorporate the NETFOLIO mark.
Complainant Netfolio, Inc., a Minnesota corporation, is the successor in interest to, and assignee of, Netfolio, L.L.C., a Connecticut limited liability company, and a leading developer of technology for Internet-based investment management tools.
Complainant is registered with the United States Securities and Exchange Commission as an investment adviser and provides its services nationwide under its NETFOLIO® mark. Complainant and presently manages over $300,000,000 in assets, primarily marketable equity securities. Complainant is presently engaged in migrating its investment-management business to the Internet and originates its services at its various websites, including those incorporating the mark in question. See, e.g., http://www.netfolio.com. Thus, there is a substantial likelihood of confusion with an Internet domain that differs from complainant’s registered mark by prefixing only a single letter, "e." Complainant is also the owner of domain name NETFOLIO.CA and has an active presence in Canada (including management of several mutual funds for Royal Bank of Canada), wherein Respondent is domiciled.
Complainant is the senior user of the NETFOLIO mark. Complainant’s registration for such mark with the United States Patent and Trademark Office has a priority date of June 30, 1999, when the application for registration of the mark was first filed on an intent-to-use basis. A copy of trademark registration database of U.S. Patent and Trademark Office re NETFOLIO is attached as an exhibit hereto.
Complainant is also the owner of the NETFOLIO mark in Canada and has an unopposed application for registration thereof presently pending before the Canadian Intellectual Property Office. See, http://strategis.ic.gc.ca/SSG/1045/trdp104579600e.html. Complainant’s Canadian priority date, February 9, 2000, antedates the registration of Respondent’s domain name by four months.
Respondent only recently registered its domain names in dispute herein, on or about June 2, 2000, following the commencement of Complainant’s use of the mark NETFOLIO and the publication for opposition of complainant’s mark by the USPTO.
At the time of registration of Respondent’s domain names, Respondent knew or reasonably should have known of Complainant’s service mark NETFOLIO and could easily have ascertained the status of such mark from a conventional trademark search.
Respondent is not generally known by the mark ENETFOLIO and has made no commercial use of the mark ENETFOLIO and has sold no goods or services under the marks (or any colorably similar mark) in any jurisdiction and therefore has no rights or legitimate interest in the domain name in dispute. Complainant has conducted an extensive business name, common-law and state and federal trademark search and has discovered no evidence of use of the mark ENETFOLIO by respondent in any trade or business. Accordingly, Respondent has no legitimate interests in respect of the domain name.
Respondent’s web site at ENETFOLIO.COM does not now contain, and has never contained, any content related to the domain name ENETFOLIO.
B. Respondent
The Respondent maintains that taking more than eight months to develop complex software for use at the ENETFOLIO web site, given the resources available and current market conditions, is not unreasonable. The Respondent has registered a domain name for active, commercial use when the software under development is completed. The Respondent maintains that it is a perfectly normal business practice to reserve legitimate names for potential goods or services prior to the completion of development of the goods or services, particularly given the growing scarcity of available, legitimate domain names.
To address these four issues, (1) the Respondent has never contemplated or attempted to sell, rent or transfer the domain name ENETFOLIO.COM to the Complainant, and in fact has never been in contact with the Complainant or it’s Representatives regarding the sale of the domain name or for any other matter; (2) the domain name was not registered to prevent the Complainant from attempting to register it’s trademark. ENETFOLIO differs from the Complainant’s generic NETFOLIO name, and NETFOLIO was not a trademark when ENETFOLIO was registered in the USA. NETFOLIO is still not registered in Canada, the respondent’s home country; (3) the domain name ENETFOLIO was not registered to disrupt the Complainant’s business, evidenced by the fact that the ENETFOLIO site has not been developed to date, and that the services offered differ from those offered by the Complainant, and; (4) the use of the domain name was not intentionally registered to create confusion with the Complainant’s trademark, as the Complainant did not have a registered trademark when ENETFOLIO was registered, the Respondent was not aware of the Complainant’s company or it’s goods or services at the time ENETFOLIO was registered, and the services offered by the Respondent will be significantly different than those specified by the Complainant’s trademark application to prevent confusion with the Complainant’s products & services.
To respond, (1) the Complainant did not have a registered trademark on NETFOLIO when ENETFOLIO was registered, and still does not have a registered trademark of NETFOLIO in Canada, the Respondent’s home country; (2) the Respondent is developing software to offer for service under the ENETFOLIO.COM web site, and thus these preparations constitute a legitimate interest, and; (3) the Respondent never registered ENETFOLIO.COM in bad faith for reasons as covered in items four and five above.
1. Respondent, a domiciliary of Canada, has expressly agreed with his domain-name registrar, Register.com, that U.S. law will be applied to determine any dispute relating to the domain name.
2. A U.S. registered service mark is "prima facie evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration . . . ." 15 U.S.C. § 1115(a). Respondent has offered no contrary evidence.
3. Respondent suggests that, even when all of the other required showings are met, a domain-name complainant cannot prevail on the basis of bad-faith "passive holding" by the respondent unless the period of non-use is lengthy. This is far from the majority view.
4. Finally, it cannot be gainsaid that, even if Respondent is successful in retaining the ENETFOLIO.COM domain name, he will be unable to use the ENETFOLIO mark in commerce — a use which he admits has not yet commenced — because any such use will infringe Complainant’s common-law and other trademark rights under its U.S. and Canadian marks. Thus, not only does Respondent not currently possess any trademark rights in his mark, but it will be impossible for him to acquire such rights under general principles of trademark law.
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
In my view, there is no valid basis to distinguish between the names Netfolio and Enetfolio. The additional letter signifies nothing with meaning, just as in EBAY, Inc. v. MEOdesigns and Matt Oettinger, D2000-1368 (Dec. 15, 2000) (finding that Respondent’s domain name "eebay.com" is confusingly similar to the complainant’s registered trademark). At the same time, both businesses involve financial management services. There is a substantial risk, therefore, that some customers of Netfolio will think Enetfolio is operated by Netfolio. I accordingly find they are confusingly similar.
Rights or Legitimate Interests
The Complainant has established, even aside from trade-mark registration, a legitimate interest in the name Netfolio. It has established goodwill in that name that, under both Canadian and U.S. law, the Respondent cannot usurp. That being clear, I do not need to inquire into the finer points of trademark law.
On the other hand, by its own admission, the Respondent has not yet any valuable commercial or legal interest in the name Enetfolio other than simple registration of a web-site by that name. It also claims preparatory work. Valuable preparatory work done in connection with the proposed use of a web-site creates a minimal commercial interest, and, if proven, can rebut an inference of bad faith. The Respondent makes the claim that work has been done. But, it is simply not good enough to make that bald statement, and to offer to corroborate it "if required". The evidentiary rules of this tribunal, while flexible, require each party to put its case in the manner set forth in the rules. The Respondent has failed to offer any support of the allegation of valuable preparatory work. This case is distinguishable from those where the existence of significant preparatory work is established. See, for example, SFX Entertainment, Inc. v. Phillip Cushway, D2000-0356 (WIPO July 10, 2000) (finding that Respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. It is rather a case like See Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Registration and Use in Bad Faith
The officer of the Respondent says he never intended to create confusion. But the Complainant is correct to say that, in the circumstances of this case,
. . . even if Respondent is successful in retaining the ENETFOLIO.COM domain name, he will be unable to use the ENETFOLIO mark in commerce — a use which he admits has not yet commenced — because any such use will infringe Complainant’s common-law and other trademark rights under its U.S. and Canadian marks.
This is not a case like Goldmasters Precious Metals v. Gold Masters srl, FA 95246 (Nat. Arb. Forum Aug. 21, 2000), where two active businesses both show prior legitimate use of the same trade name. This Respondent has no goodwill in this name from prior use. His use of this name in a new business effort is doomed.
In other words, even if I accept that the Respondent originally had no intention to steal the goodwill of the Complainant by registration of this name, it by now must be aware that its proposed use of this name would result in the loss of goodwill to the Complainant. If the Respondent now were to proceed with the implementation of a financial management service under the name Enetfolio, it must be taken as intending to attract users to its site for gain by creating a likelihood of confusion with the Complainant’s business. I think I am entitled to rely upon evidence of bad faith after the complaint is offered.
In any event, the Respondent has failed to meet the burden to rebut the inference of cyber-squatting available from inaction on the challenged site for many months.
In these circumstances, I infer bad faith.
DECISION
The name ENETFOLIO.COM is hereby transferred to the Complainant.
Hon. Roger P. Kerans (ret.)
Dated March 27, 2001.
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