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Generic Top Level Domain Name (gTLD) Decisions |
EmergeCore
Networks, LLC v. Joseph Trzepla and JT Images, Inc.
Claim Number: FA0305000159406
Complainant is EmergeCore Networks, LLC, Boise, ID (“Complainant”) represented by
Robert L. Shaver, Esquire of Dykas, Shaver & Nipper LLP. Respondents
are Joseph Trzepla and JT IMAGES, INC.,
Lyndhurst, NJ (“Respondent”).
The domain names at issue are <ITINABOX.biz> and <ITINABOX.com> registered with Tucows, Inc.
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.
M.
KELLY TILLERY, ESQUIRE,
as Panelist.
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on May 22, 2003; the
Forum received
a hard copy of the Complaint on May 22, 2003.
On May 27, 2003, Tucows, Inc. confirmed
by e-mail to the Forum that the domain names <ITINABOX.biz> and <ITINABOX.com>
are registered with Tucows, Inc. and that the Respondents are the current
registrants of the names. Tucows, Inc. has verified that
Respondents are bound
by the Tucows, Inc. Registration Agreement and have 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 June 10, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting
a deadline of June 30, 2003 by which Respondents could
file a Response to the Complaint, was transmitted to Respondents via e-mail,
post and fax, to all entities and persons listed on Respondents’ registration
as technical, administrative and billing contacts,
and to postmaster@ITINABOX.biz
and postmaster@ITINABOX.com by e-mail.
A timely Response was received and
determined to be complete on June 30, 2003.
On July 9, 2003,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY
TILLERY, ESQUIRE, as Panelist.
Complainant requests that the domain
names be transferred from Respondents to Complainant.
A. Complainant
Complainant contends that :
1.
its
Complaint is based on the U.S. Federally Registered Trademark IT IN A BOX®,
Registration No. 2,671,785;
2.
the goods
and services associated with this Mark are: Computer devices
for use with a computer network connected
to the Internet, which provide network services, and which contain network management
hardware
and software, namely, an internet protocol switch, an internet
protocol router, a memory card, switch ports, a network card, and
an
application server comprised of internet and network related software, namely
e-mail server operating software, a virtual private
network (vpn) server,
firewall software, file and print server software, dns server software, web
server software, and ftp server
software;
3.
the domain
names <ITINABOX.com> and <ITINABOX.biz> are identical or
confusingly similar to its U.S. Federally Registered
Trademark IT IN A BOX®;
4.
Respondents
should be considered as having no rights or legitimate interest in respect to
the domain names because Respondents do
not conduct a business or sell products
or services that make a bona fide use of the mark IT IN A BOX®;
5.
Respondents
are merely registering domain names for speculative purposes and not using them
for any other reason;
6. the Internet Way Back Machine shows that no
active websites have ever been available on the domains <ITINABOX.com> or
<ITINABOX.biz>;
7.
these facts
show that Respondents have registered or acquired the domain names primarily for the purpose of selling,
renting, or otherwise transferring the domain names to Complainant, who is the
owner of the
trademark; and
8.
the domain
names should be considered as having been registered and being used in bad
faith.
B. Respondents
Respondents contend that:
1.
they
are not using the domain names <ITINABOX.com> and <ITINABOX.biz>
for the purpose that Complainant alleges, therefore
they are not identical or
confusingly similar to Complainant’s Mark;
2.
the
domain names are being used as e-commerce web sites selling therapeutic
products;
3.
the
<ITINABOX.com> and <ITINABOX.biz> web sites have been in existence
before ITINABOX had become Registered Trademark;
4.
Respondents
do have rights or legitimate interest with respect to the domain names
at issue;
5.
Respondents
have not registered the domain names primarily to sell, rent or otherwise
transfer them;
6.
Respondents
have been contacted several times to sell the domain names and each and every
time have said that the domain names are
not for sale;
7.
the
domain names were initially registered for selling products; and
8.
Respondents
did not register and do not use the domain name in bad faith.
1. Complainant has met its
burden to prove by a preponderance of the credible, relevant, admissible
evidence that Respondents’ domain
names are confusingly similar to a mark in
which Complainant has rights. Policy
¶4(a)(i).
2. Complainant
has met its burden to prove by a preponderance of the credible, relevant,
admissible evidence that Respondents have no
rights or legitimate interest in
respect to the domain names. Policy ¶4(a)(ii).
3. Complainant has met its burden to prove by a preponderance of
the credible, relevant, admissible evidence that Respondents’ domain
name has
been registered and are being used in bad faith. Policy ¶4(a)(iii).
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.
Respondent does not dispute that Complainant
owns the Trademark “IT IN A BOX” and that it registered same with the United
States Patent
and Trademark Office (Registration No. 2,671,785) on January 7,
2003. Nor do Respondents dispute that
the Application for that Trademark was filed on December 21, 2001 and that
Complainant’s First Use
of the Mark was on June 15, 2001 as reflected in the
records of the United States Patent and Trademark Office.
Respondents contend that their Domain
Names are not identical or confusingly similar to the Registered Trademark of
Complainant because
they use the Domain Names, not for network services as does
Complainant, but rather for E-Commerce Websites selling therapeutic
products.
While Respondents’ argument might have
some merit, if Complainant were required to prove that the Domain Names and
Mark were “confusingly
similar”, it has none when Complainant is only
required to prove that its Mark and the Domain Names are “identical or
confusingly similar”. There can be no
doubt that the Mark is identical to both Domain Names, absent the
“.com” and the “.biz” which for these purposes are irrelevant. See Rollerblade, Inc. v. McCrady, D
2000-0429 (WIPO, June 25, 2000); Victoria’s Secret v. Hardin, FA 96694
(Nat. Arb. Forum, March 31, 2000).
Thus, Complainant has met its burden to
prove the first element of its case.
Policy 4(a)(i).
Rights
and/or Legitimate Interest
Complainant contends that Respondents
have no rights or legitimate interest in the Domain Names. Although Complainant contends that the
Domain Names do not resolve to any website and never have, Respondents contend
that they are
in fact selling products using E-Commerce Websites based upon the
Domain Names and in support thereof have included a “Screen Shot”
of
“<ITINABOX.com>” which appears to be a site for “Eye Therapy In A Box”
selling vitamins and other therapeutic substances.
The Screen Shot is undated, but
Respondents contend that they have been using the Domain Names for such website
“before ITINABOX had become a Registered Trademark” on January 7, 2003.
Complainant does not have to have a
Registered United States Trademark in order to have “rights in a mark” as
required by the Policy. Indeed, it is
undisputed on this Record that Complainant utilized the “ITINABOX” as its
Trademark in United States Interstate Commerce
since as early as June 15, 2001,
long prior to January 7, 2003.
There is no evidence of any specific date
upon which Respondents began or ever actually used their Domain Names except
that Respondents
contend that, at least as of the date that they filed their
Response on June 30, 2003, that they were in fact utilizing the Domain
Names
for a website to sell goods in a bona fide manner.
On June 4, 2003, David W. Brown,
President and CEO of Complainant signed a Certification that the information
contained in Complainant’s
Amended Complaint is “to the best of Complainant’s
knowledge, complete and accurate”. That
Amended Complaint includes the following statement:
“A
search on the Internet Way Back Machine shows that no active websites have ever
been available on the Domain’s <ITINABOX.com>
or
<ITINABOX.biz>.”
On July 21, 2003, this Panel entered the
Domain Names into the Internet Archive Way Back Machine and found as follows[1]
As of July 21, 2003, <ITINABOX.com>
and <ITINABOX.biz> do indeed resolve to websites which apparently
sell therapeutic products. However,
curiously absent from those sites are any identifying information which
would link those sites to Respondents.
In fact, the site appears to be a “form site” provided by an online
store known as <vstore.com> whose Site Section entitled
“About vstore”
states as follows:
“Vstore is a revolutionary new form of
E-Commerce that empowers anyone to open an online store and just five
minutes – for free! The vstore
solution eliminates the traditional barriers to E-Commerce faced by
individuals, online communities, and affinity groups. The vstore store-building allows individuals and small online
businesses to select the products they want to sell and to customize
the look
and feel of their storefront.
Vstore provides all posting, transaction
processing, customer service, order fulfillment, merchandising and marketing
programs. Now any one who has an
Internet Marketing idea can get the necessary tools and product catalog to create
a successful online store
quickly and easily.” [Emphasis added]
Thus, based upon the representations of
Complainant, which are uncontroverted directly and/or specifically by
Respondents, it appears
that the Site was created by Respondents “in five (5)
minutes” as promoted by vstore after Complainant’s Registration of its
Mark and perhaps even after the Complaint was filed.[2] Otherwise, Respondents would have provided some
dated documentation and/or an Affidavit or other testimony to support
their claim under Policy 4(c)(i), for a bona fide “prior to
notice of Complaint” use.
In fact, the Internet Archive Way Back
Machine checked on this same date, reflects as follows:
1. no Website pages for <ITINABOX.com> for
1996, 1997, 1998, 1999, 2000 and 2001;
2. in 2002, there are WebPages for
<ITINABOX.com> as follows: January 21, May 25, June 1 and June 5; and
3. no matches whatsoever found on the Internet
Archive Way Back Machine for <ITINABOX.biz>.
However, this Panel is unable to
determine whether the uses referred to on the Internet Archive Way Back Machine
are in fact uses
of the Respondents since the response to inquiry regarding
same on the Internet Archive Way Back Machine is that “access to those
sites
have been blocked by the site owner, Vorobots.txt”.
Thus, the first use in commerce by
Complainant of its Mark on June 15, 2001 and the filing of its Application on
December 21, 2002
are both prior to the earliest possible actual use by
Respondents. Although
<ITINABOX.com> was registered on October 31, 2001 and
<ITINABOX.biz> was registered on July 4, 2002, Complainant
was still the
prior user since its first use was on June 15, 2001 as reflected in the United
States Patent and Trademark Office records.
Thus, clearly, Complainant is the prior
user of the Mark, and there is no credible evidence of record to support
Respondents’ implied
claim of “prior to notice of Complaint” bona fide
use. Policy 4(c)(i).
Under all of these circumstances, this
Panel cannot find that Respondents have in fact utilized the Domain Names in
question in connection
with a bona fide business prior to notice of the
Complaint.
Complainant has proven that Respondents
have no rights or legitimate interest in respect to these Domain Names.
Although Complainant claims that
Respondents have registered the Domain Names for purposes selling, renting or
otherwise transferring
them, there is no evidence to support this claim. However, the Panel finds that the absence of
evidence of a real site, and the apparent post-Complaint establishment of a
“site” by
Respondents is sufficient to support a finding of registration and
use in bad faith. Telestar v.
Nuclear Marshmallows, Case No. D 2000-0003 (WIPO, February 18, 2000).
Having established all three elements
required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <<ITINABOX.biz>> and <<ITINABOX.com>> domain
names be TRANSFERRED from
Respondents to Complainant.
M. KELLY TILLERY,
ESQUIRE, Panelist
Dated: July 24, 2003
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