DECISION

Internet Billing Company LLC v. Brian Yu d/b/a iContents

Claim Number: FA0302000146944

PARTIES

Complainant is Internet Billing Company LLC, Deerfield Beach, FL, USA (“Complainant”) represented by Barry C Leeper.  Respondent is Brian Yu d/b/a iContents, Seoul, SOUTH KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <i-bill.com>, registered with Tucows.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 27, 2003; the Forum received a hard copy of the Complaint on March 4, 2003.

On February 28, 2003, Tucows confirmed by e-mail to the Forum that the domain name(s) <i-bill.com> is registered with Tucows and that Respondent is the current registrant of the name.  Tucows verified that Respondent is bound by the Tucows registration agreement and 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 March 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 25, 2003, 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@<I-BILL.COM> by e-mail.

A Response was received on March 25, 2003. The Response is in Korean although the language of the Registration Agreement is English.

On March 31, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations:

1. The domain name registered by Respondent contains in its entirety a mark in which Complainant has rights.

2. Respondent has no rights to or legitimate interests in the mark or domain name.

3. Respondent registered and used the domain name in bad faith.

B. Respondent’s Response was in Korean although the language of the Registration Agreement is English.

FINDINGS

Complainant has shown in this proceeding that it has rights in the IBILL and IBILL.COM mark and domain name by virtue of numerous registrations of the mark and related design logos with the United States Patent and Trademark Office and by continuous use in commerce as early as December 1, 1995.  Complainant’s area of commerce is Internet billing, collection services, and computer consulting services.

Complainant’s enterprise is well known internationally and the mark and domain name used by Complainant have distinguished Complainant’s goods and services from others who accept and process real time payments for goods and services purchased over the Internet.

Complainant owns numerous trademark numbers for its marks, including Registration Numbers 2,617,669; 2,143,923; 2, 247,225; 2,574,619; 2,216,085 and 2,617,669. Complainant also has shown that it has common law rights in the mark and related design logos, has invested extensively in the mark, has spent more than $15 million in development of and promotion of its website and has established significant good will in the mark.  Complainant’s co-branded billing and collection services handled about $800,000,000 in consumer transactions during the year 2001. Forbes Magazine among other financial periodicals and newspapers recognized Complainant’s website as one of the twenty most visited B2B sites in the United States.

Complainant has vigorously defended and enforced its mark and has negotiated with others to reach agreed settlements of disputes.

Respondent registered the <I-BILL.COM> mark May 5, 2001, some six years after Complainant’s first use in commerce, five years after Complainant filed for trademark protection, and three years after Complainant’s application for trademark was approved.

Complainant first used the mark IBILL in commerce in 1997 but registered it September 10, 2002.

The sole difference between Complainant’s IBILL and IBILL.COM marks and the domain name registered by Respondent is the hyphen that Respondent placed between the “I” and the “BILL” in the domain name registered by Respondent.

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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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 to and/or Confusingly Similar

Complainant holds numerous trademarks for IBILL registered with the United States Patent and Trademark Office, including Registration Numbers 2,617,669 and 2,143,923, among others.

Complainant asserts that the domain name registered by Respondent, <i-bill.com>, is identical to Complainant’s IBILL mark because it merely inserts a hyphen between the “i” and “bill” and adds the top-level domain “.com.”  The Panel finds that the addition of a hyphen to a domain name does not add any distinct characteristics capable of overcoming a claim that the domain name is identical or confusingly similar.  See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar to the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”). 

Furthermore, a top-level domain such as “.com” does not add distinguishing characteristics because a top-level domain is a required element of all domain names.  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 Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Without a proper, timely Response from Respondent in the language of the agreement the Panel has nothing before it to refute Complainant’s allegations. The Panel finds that the UDRP Policy ¶ 4(a)(i) concerning whether or not the domain name is identical to or confusingly similar has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the

<i-bill.com> domain name because Respondent is not commonly known as I-BILL or

<i-bill.com>.  Complainant asserts that Respondent is commonly known as iContents, a business that engages in the sale of domain names.  Based on this information the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent has no rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Complainant asserts that Respondent is in the business of selling domain names.  Currently, the <i-bill.com> domain name resolves to a website that offers the domain name registration of <i-bill.com> for sale.  Complainant notes that Respondent has made no other use of the domain name.  The Panel may find that Respondent’s attempted sale of the disputed domain name registration does not amount to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights).

Without a timely, proper Response in the language of the Registration Agreement, the Panel has nothing from the Respondent to challenge Complainant’s assertions. See Telstra Corporation Ltd v. Mr. Jeon (No. D2001-1161 WIPO November 28, 2001) (holding that where the Panel may exercise power to require a translation of foreign language documents; such action is not required where Respondent has had ample opportunity to make an additional response that is in compliance with the rules).

The Panel finds that Policy ¶ 4(a)(ii) requiring a showing that Respondent has “no rights or legitimate interests” has been satisfied.

Registration and Use in Bad Faith

Complainant asserts that Respondent registered the domain name with the intention of selling it to Complainant.  Complainant notes that when it contacted Respondent, Respondent replied that the domain name registration was for sale for $85,000.  Complainant asserts that this price is far beyond Respondent’s out-of-pocket expenses and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).

Complainant asserts that Respondent has engaged in the practice of registering domain names that incorporate the marks of others.  Complainant notes that approximately 169 of Respondent’s domain name registrations appear to be derived from registered trademarks.  Complainant argues that Respondent is engaging in a pattern of bad faith registration pursuant to Policy ¶ 4(b)(ii).  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that  Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

Without a timely, proper Response in the language of the Registration Agreement, the Panel has nothing before it to challenge Complainant’s assertions.  The Panel finds that Policy ¶ 4(a)(iii) requiring a showing of “bad faith” has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <i-bill.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

 Dated: April 14, 2003.

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