DECISION

INFO1, Inc. v. Info-One Technology, Inc.

Claim Number: FA0303000149169

PARTIES

Complainant is INFO1, Inc., Norcross, GA (“Complainant”) represented by Mark L. Seigel, of Needle & Rosenberg, P.C.  Respondent is Info‑One Technology, Inc., Campbell, CA (“Respondent”) represented by Michael Tobin, of Kennedy, Covington, Lobdell and Hickman, LLP.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <info1.com> and <info1.net>, registered with Network Solutions, Inc.

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 Panelist is Richard DiSalle.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 11, 2003; the Forum received a hard copy of the Complaint on March 12, 2003.

On March 14, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <info1.com> and <info1.net> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 March 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 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@info1.com and postmaster@info1.net by e-mail.

A timely Response was received and determined to be complete on April 3, 2003.

On April 24, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard DiSalle as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.  Complainant

Complainant has been using the trademark INFO1 continuously and exclusively since at least November 1993 in association with mortgage credit reporting services.  Complainant has spent nearly one million dollars promoting its services nationwide under the INFO1 mark and claims that there is strong customer recognition of its mark as an indicator of the source of such services.

Complainant owns United States trademark application for the trademark INFO1, Serial No. 78/218,371, filed on February 24, 2003 for “mortgage credit reporting services,” in International Class 36, with a date of first use and first use in commerce of November 1993.

Complainant asserts that Respondent’s INFO1.com domain name and INFO1.net domain are legally equivalent and confusingly similar to Complainant’s INFO1 servicemark, and do not sufficiently differentiate the resulting domain name from the trademark wholly incorporated in that domain name.

Complainant also asserts that Respondent does not maintain rights or legitimate interests in respect of the domain names in that Respondent has not made preparations to use the domain names in a bona fide offering of goods and services.  According to the Complainant, over four and one-half years have elapsed since Respondent registered the domain names and they still do not resolve to a website, nor is Respondent commonly known by the distinct mark incorporated in the domain names.

Complainant further asserts that the Respondent has registered the domain names in bad faith. Complainant concedes that Respondent’s conduct does not fall within the four specific examples of bad faith registration and use set out in paragraph 4(b) of the Policy, but argues that the list of circumstances constituting bad faith set forth in that paragraph are not exclusive. 

B.  Respondent

Respondent’s goods and services are:  computer software, namely a comprehensive set of applications and templates for building business and marketing management solutions for use on electronic communication networks; computer software for searching and retrieving information, sites and other resources on electronic communication networks; computer software for accessing information on electronic communications networks; computer software for customizing the delivery of information to others via electronic communication networks; computer software for collecting and presenting news and information electronically; computer software for enabling users to buy and sell goods and services via electronic communication networks; and user manuals sold as a unit.

Respondent argues that this is not a typical domain name dispute in which one party registers a domain name similar to another party’s trademark.  Rather, Respondent says, this is a case in which two businesses each adopted similar trademarks — INFO1 and INFO-ONE — for use in association with different goods and services.  Each business has used its respective mark for years, and  each has an application to register its respective mark currently pending before the United States Patent and Trademark Office.  Respondent’s application was filed in 1998 — five days after the disputed domain names were registered by Respondent’s predecessor-in-interest — and has been approved for publication by the USPTO.  The application relied upon by Complainant, on the other hand, was filed only recently and has yet to be assigned to a Trademark Examining Attorney. 

Respondent says that in June 1998, Info-One Technology, Inc. was incorporated in California and registered the domain names at issue, <info1.com> and <info1.net> .  Also in June 1998, Info-One Technology, Inc. filed U.S. Trademark Application Ser. No. 75/499,673 for the mark INFO-ONE for use in association with computer software.

Respondent notes that Complainant has failed to satisfy its burden under the first element of the UDRP of establishing that the domain names are identical or confusingly similar to “a trademark or service mark in which the complainant has rights” (Policy  4(a)), and says that there is no evidence in the Complaint that Complainant has established any recognizable trademark rights in the INFO1 mark.

Respondent claims that it has been using a name (i.e., Info-One) corresponding to the domain names (i.e., info1.com/.net) in connection with a bona fide offering of goods since at least as early as 1999 — over three years before the Complaint was filed.

Respondent says that Complainant has also failed to establish that the domain names were registered and have been used in bad faith, and points out that Complainant has not alleged that Respondent has used the domain names in bad faith, only that Respondent has registered the domain names in bad faith.

            C.  Additional Submissions

Apparently, in late April, Complainant had requested permission to file an additional submission.  However, the additional submission was not received by the Panelist at that time.  On Monday, May 5, 2003, the Panelist called the Forum to see whether any additional submissions had been received and was advised that none had been filed.  At 4:00 p.m. on the afternoon of May 5, the Panelist received from the Forum, without comment, an additional submission from the Complainant.   It appears that new counsel, Mark L. Seigel, of Needle & Rosenberg, P.C., has been retained by the Complainant.  The Panelist has reviewed the additional submission, which states that its only purpose is to respond to the claim by the Respondent that the Complaint had been filed in bad faith.  No response to the submission has been received by the Panelist.  Although the submission was filed far beyond the last day for filing submissions, the Panelist has reviewed it and did consider it in view of the late substitution of counsel. 

FINDINGS

(1) the domain name registered by the Respondent is confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has legitimate interests in respect of the domain name; and

(3) the domain name is not being used in bad faith.

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

Respondent’s <info1.com> and <info1.net> domain names are “legally equivalent and confusingly similar” to Complainant’s INFO1 mark. Because top-level domains, such as “.com” and “.net,” are irrelevant when scrutinizing domain names under Policy ¶ 4(a)(i), Respondent’s domain names are confusingly similar to Complainant’s 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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").  It is clear that Respondent’s domain names are confusingly similar to Complainant’s mark.

Rights or Legitimate Interests

Respondent has rights and legitimate interests in the domain names under Policy ¶ 4(c)(i).  Respondent has been using the “Info-One” name, which corresponds with the disputed domain names, since at least 1999 in connection with the sale of computer software.  Due to a series of mergers, Info-One Tech., Inc. was eventually merged into SCG Holding, Inc., which thereafter changed its name to Info-One.  On December 31, 2001, Professional Direct Agency (“PIVOT”) purchased the assets of Info-One, including the domain name registrations, and uses them in connection with its software products. See Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001) (finding that Respondent could have legitimate interest in developing a mark identical to Complainant’s where mark was weak and Respondent operated in unrelated field); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that Respondent could maintain rights in a similar mark as Complainant because Complainant and Respondent were not in the same field of business, and therefore not competitors); see also SFX Entmt., Inc. v. 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); see also Genting Berhad v. Tan Kim Sin, FA 94735 (Nat. Arb. Forum June 28, 2000) (finding that Respondent had legitimate interests in the domain name where Respondent had made preparations to use the domain for his newly formed business); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where Respondent sought to develop a bona fide business use for the domain name).  Based on the foregoing, the Panelist concludes that the Respondent does have legitimate interests in the domain names.

Registration and Use in Bad Faith

Respondent’s disputed domain names were registered and are being used in good faith. By Complainant’s own admission, “Respondent’s conduct does not fall within the specific examples of bad faith registration and use set forth in Paragraph 4(b) of the Policy.”

Respondent did not have constructive knowledge of Complainant’s mark because the disputed domain names were registered long before Complainant’s trademark application was filed. See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum August 5, 2002) (finding that because Complainant’s mark was not particularly well-known outside of its field, and Complainant failed to show that Respondent knew or should have known about Complainant at the time of registration, Respondent did not register the domain name in bad faith).

Complainant’s argument that there is no plausible explanation as to why Respondent selected the INFO1 service mark as a component of the domain names other than to disrupt Complainant’s business is not supportable. Numerous reasons exist that explain why Respondent registered <info1.com> and <info1.net>, namely, the domain names reflect Respondent’s “Info-One Technology, Inc.” corporate identity and Respondent’s predecessor-in-interest filed a federal trademark application in 1998 for the INFO-ONE mark. See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name”); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent registered the domain name in question before application and commencement of use of the trademark by Complainant).

The domain names are not being passively held, as Complainant contends. A domain name can also be used as a domain for e­‑mail addresses, even when there is no corresponding active website. The <info1.com> domain name was used for this purpose from approximately 2000 until mid-2002, but was deactivated because of unsolicited e‑mail SPAM. See S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that “Respondent has shown demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute. The fact that Respondent has not yet actually made any use of the domain name does not undermine the fact that Respondent has shown demonstrable preparations to use the domain name”); see also Vidiots Delight, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad faith where Respondent was using the domain name in connection with its business even though no website was yet developed).

Complainant’s reliance on the decision in Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) is misguided because many of the elements that the panel relied on in Telstra to determine bad faith are absent from the present dispute.  The Panelist finds that Respondent is not using its domain names in bad faith.

DECISION

Having decided that the three elements required under ICANN Policy have not been established, the Panelist concludes that the relief requested shall be DENIED.  The Respondent’s claim that the Complaint was filed in bad faith is also DENIED.

Accordingly, it is Ordered that the Complaint be dismissed.

Richard DiSalle, Panelist
Dated:   May 8, 2003

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