DECISION

Deltathree Inc. v. Rafi Bashir

Claim Number: FA0209000124510

PARTIES

Complainant is Deltathree Inc., New York, NY, USA (“Complainant”).  Respondent is Rafi Bashir, Karachi, PAKISTAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <iconnecthere.us>, registered with Verisign.

PANEL

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

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 3, 2002; the Forum received a hard copy of the Complaint on September 20, 2002.

On September 9, 2002, Verisign confirmed by e-mail to the Forum that the domain name <iconnecthere.us> is registered with Verisign and that Respondent is the current registrant of the name.  Verisign has verified that Respondent is bound by the Verisign registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On September 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 14, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The <iconnecthere.us> domain name is confusingly similar to Complainant’s ICONNECTHERE.COM mark.

Respondent has no rights or legitimate interests in the <iconnecthere.us> domain name.

Respondent registered and used the <iconnecthere.us> domain name in bad faith.

B. Respondent

            Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant uses its ICONNECTHERE.COM mark to represent its consumer oriented “VoIP telephony offerings.”  Complainant operates a website at <iconnecthere.com>, whereby it conducts transactions with consumers and thus has access to credit card information.  Complainant offers the consuming public low rates on telephone calls worldwide, and has been doing so under the auspices of the ICONNECTHERE.COM mark since 1996. 

Respondent registered the domain name on May 29, 2002.  Respondent uses the domain name to connect Internet users to a website that is strikingly similar to Complainant’s <iconnecthere.com> website.  Respondent’s website uses the identical format of Complainant’s <iconnecthere.com> website with most of the same language, which Complainant has copyrighted.  Respondent allegedly solicits the same business as Complainant by providing the same “Login” field that Complainant has at its website.  Therefore, Respondent could possibly obtain credit card information of Complainant’s customers.  The only substantial difference between the two websites is that Respondent’s website offers consumers a $100 dollar sign-up bonus.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.

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; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant has used its ICONNECTHERE.COM mark to denote its telecommunication services since 1996.  While Complainant has not provided proof of trademark registration, Complainant has provided evidence of commercial use of the ICONNECTHERE.COM mark.  The Policy does not require trademark ownership to bring a claim.  Rather, a party must show that it has rights in a mark that is identical or confusingly similar to the disputed domain name.  At present, Complainant has established common law rights in the ICONNECTHERE.COM mark through proof of commercial use.  Hence, Complainant has established standing.  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark FISHTECH that it has used since 1982).

Respondent’s <iconnecthere.us> domain name is nearly identical to Complainant’s ICONNECTHERE.COM mark.  The only difference between the two is the respective top-level domains.  Since Complainant’s mark incorporates the top-level domain “.com,” Respondent’s domain name is not wholly identical to the mark.  This is because the “.com” portion of the mark holds some significance as a part of the mark itself.  However, transposing the top-level domain from “.com” to “.us” does not create an entirely distinct domain name.  The domain name still reflects the most dominating portion of Complainant’s mark, “ICONNECTHERE.”  Therefore, Respondent’s <iconnecthere.us> domain name is confusingly similar to Complainant’s ICONNECTHERE.COM mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).

The Panel finds that the Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant challenges Respondent’s interests in the <iconnecthere.us> domain name by asserting Respondent lacks rights and legitimate interests in the domain name.  Complainant has submitted a prima facie Complaint and therefore the burden shifts to Respondent to articulate valid rights or legitimate interests.  Respondent, however, has failed to come forward and submit a Response.  Therefore, the Panel presumes that Respondent has no rights or legitimate interests in the domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, due to the absence of a Response, the Panel accepts all of Complainant’s allegations as true and will draw all reasonable inferences in favor of Complainant.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent has failed to come forward to provide evidence of a trademark or service mark that is identical to the <iconnecthere.us> domain name.  There is no evidence that suggests Respondent has valid ownership rights in such a mark.  In addition, nothing on the record demonstrates that Respondent is commonly known by the <iconnecthere.us> domain name.  Therefore, Respondent has no legitimate rights or interests in the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See CDW Computer Centers, Inc. v. The Joy Comp. FA114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that Respondent had no trademark or service marks identical to <cdw.us> and therefore had no rights or legitimate interests in the domain name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Respondent uses the <iconnecthere.us> domain name to divert Internet users and Complainant’s customers to a website that is identical in format to Complainant’s <iconnecthere.com> website.  Respondent uses some of the same language found at the <iconnecthere.com> website, which Complainant has copyright protected, and offers a log-in field that is identical in appearance to Complainant’s website.  Because Complainant has access to its customer’s credit card data through this log-in field, Respondent’s infringing use breaches highly sensitive information.  Furthermore, Respondent uses Complainant’s stylized version of the ICONNECTHERE.COM mark.  Respondent not only makes use of Complainant’s mark as its domain name but Respondent imitates Complainant’s <iconnecthere.com> commercial website.  Respondent’s use of the domain name does not represent a use in connection with a bona fide offering of goods pursuant to Policy ¶ 4(c)(ii), nor does the use constitute a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iv).  See Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of a website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

Accordingly, The Panel finds that Respondent has no rights or legitimate interests in the <iconnecthere.us> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The circumstances make it clear that Respondent knew of Complainant’s interest in the ICONNECTHERE.COM mark.  Respondent uses the <iconnecthere.us> domain name to resolve to a website that mirrors Complainant’s <iconnecthere.com> telecommunications website.  At Respondent’s website, Complainant’s stylized ICONNECTHERE.COM mark is used along with language identical to Complainant’s copyrighted website.  Thus, it is evident that Respondent knew of Complainant’s business and attempted to capture Complainant’s consumers, perhaps to obtain credit card information from Complainant’s existing or potential customers.  Respondent’s registration and use of the <iconnecthere.us> domain name is a classic example of bad faith under Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <iconnecthere.us> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: November 9, 2002

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