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Generic Top Level Domain Name (gTLD) Decisions |
infoUSA Inc. v. Bharat Gohil
Claim Number: FA0307000167915
PARTIES
Complainant
is infoUSA Inc., Omaha, NE
(“Complainant”) represented by Kathy J.
Kirschbaum and Mark J. Peterson of Koley Jessen PC. Respondent is Bharat J. Gohel, Langhorne, PA, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <infousa.info>
(the “Domain Name”), registered with Direct
Information Pvt. Ltd. d/b/a
Directi.com (the “Registrar”).
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.
Robert
A. Fashler as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 3, 2003; the Forum received
a hard copy of the Complaint
on July 7, 2003.
On
July 8, 2003, the Registrar confirmed by e-mail to the Forum that the Domain
Name is registered with the Registrar and that Respondent
is the current
registrant of the Domain Name. The
Registrar has verified that Respondent is bound by the Registrar’s 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
July 10, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of July 30,
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@infousa.info by e-mail.
A
timely Response was received and determined to be complete on July 30, 2003.
Complainant’s
Additional Submission was received and determined to be timely on August 4,
2003.
On August 8, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Robert A.
Fashler as Panelist.
RELIEF SOUGHT
Complainant
requests that the Domain Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Primary
Submissions
Complainant
asserts that:
(a)
Complainant
owns two relevant U.S. trademark registrations namely:
|
Mark |
US REG. NO. |
REG. DATE |
|
INFOUSA
Design |
2,147,134 |
March
31, 1998 |
|
INFOUSA
& Design |
2,267,512 |
August
3, 1999 |
(collectively, the “Trademarks”) both of which are
registered in association with business and consumer information services,
namely,
preparing and compiling informational lists and directories relating to
businesses and consumers for others;
(b)
Complainant
has used the Trademarks continually since June 30, 1996;
(c)
Complainant
has used the name INFOUSA in connection with the license and sale of derivative
databases and contract management systems
and software, which has caused that
name to develop significant secondary meaning;
(d)
the
Trademarks are distinctive and famous;
(e)
the Domain
Name incorporates the mark INFOUSA;
(f)
Respondent
has no rights or legitimate interests in the Domain Name because:
(i)
before
receiving notice of the dispute, Respondent had not used, or demonstrated any
preparations to use, the Domain Name or a name
corresponding to the Domain Name
in connection with a bona fide offering of goods or services;
(ii)
Respondent
is not making any legitimate non-commercial or fair use of the Domain Name;
(iii)
neither
Respondent nor any business or other organization affiliated with Respondent
has been commonly known by the Domain Name;
and
(iv)
neither the
Respondent nor any business or other organization affiliated with Respondent
has acquired any trademark or service mark
rights in the mark INFOUSA or any
marks similar to the mark INFOUSA or the Domain Name; and
(g)
the Domain
Name has been registered and used in bad faith in that:
(i)
Respondent
has no affiliation or relationship with Complainant, and has no legitimate
reason or interest for using Complainant’s marks
in the Domain Name;
(ii)
Respondent
has failed to established any legitimate use of the Domain Name;
(iii)
Respondent
has registered the Domain Name primarily for the purpose of disrupting the
business of Complainant;
(iv)
Respondent
registered the Domain Name only days after the open registration period began
allowing registration of domain names within
the .info top level domain;
(v)
Respondent
has not posted any commercial, non-commercial, or fair use materials on a
website associated with the Domain Name, which
demonstrates that Respondent is
passively holding the Domain Name and merely warehousing it with no bona fide
intent to use the Domain
Name;
(vi)
Respondent
had constructive notice, and possibly actual notice, of the Trademark
registrations;
(vii)
Complainant
is widely known in the business community under the name and mark INFOUSA; and
(viii)
Complainant
has attempted to resolve the dispute but Respondent has chosen to ignore the
suggestions of Complainant and has failed
to identify any bona fide intent to
use the Domain Name.
B. Respondent
Respondent
asserts that:
(a)
the Domain
Name is identical to the Trademarks;
(b)
the words
INFO USA have been registered as a trademark in the U.S. by two registrants
other than Complainant, one of which (like Complainant)
is also called
“InfoUSA, Inc.”;
(c)
several
similar domain names have been registered by third parties;
(d)
although
Complainant had the opportunity to do so, Complainant did not register the
Domain Name during the “sunrise period” when “.info”
domain name registrations
were first made available;
(e)
Respondent
currently provides “how-to” information over a variety of websites and intends
to do so on a website located at the Domain
Name;
(f)
the words
“info” and “USA” are generic, and Respondent’s combination of those words in
the Domain Name was not done in bad faith;
and
(g)
Respondent
has not offered to sell the Domain Name and has not used the Domain Name in a
manner that would conflict with Complainant’s
trademark rights.
C. Complainant’s Additional
Submissions
Complainant
further asserts that:
(a)
the fact
that other entities have federal registrations for marks that comprise the
words INFO and USA is irrelevant;
(b)
the fact
that other entities have registered similar domain names is irrelevant;
(c)
the fact
that Respondent is passively holding the Domain Name is evidence of bad faith
registration and use; and
(d)
the
existence of Respondent’s other websites is irrelevant.
FINDINGS
The Domain Name is confusingly similar to
a trademark or service mark in which Complainant has rights.
Complainant has not proven that
Respondent lacks rights or legitimate interests in respect of the Domain Name.
Complainant has not proven that the
Domain name has been registered or is being used by Respondent 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 complainants to prove each of the following three
elements to obtain an order that a domain
name should be cancelled or
transferred:
(i) the
domain name is identical or confusingly similar to a trademark or service mark
in which complainant has rights;
(ii) respondent
has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered
and is being used in bad faith.
Complainant has
provided no evidence in support of its various assertions other than
information about its own trademark registrations
and a Whois search for the
Domain Name. Complainant has not
provided any evidence of its own use of the Trademarks or the basis upon which
the Trademarks might enjoy the
high reputation, substantial goodwill, and fame
that Complainant asserts. Complainant
has also failed to provide any evidence to establish the truth of the
allegations it makes about Respondent.
Complainant’s case is based almost entirely on assertions, most of which
are quite vague.
Complainant has
established rights in the Trademarks by virtue of registration of the marks on
the Principal Register of the U.S.
Patent and Trademark Office.
Both of the
Trademarks are design marks. The
trademark registered under No. 2,147,134, comprises the words INFOUSA in a
particular sylized format. The
Trademark registered under No. 2,267,512 has an additional design element. The design aspects of both Trademarks do not
alter the dominant feature of those marks, which is the word INFOUSA.
For all
practical purposes, the second level of the Domain Name is substantially
identical to the Trademarks, particularly the Trademark
that consists of the
word INFOUSA depicted in stylized lettering, which is registered under No.
2,147,134. See World Emergency Relief v. Chuck Thompson,
D2000-0844 (WIPO Nov. 20, 2000). In any
event, the dominant impression given by the Trademarks is the word INFOUSA, and
the second level of the Domain Name is identical
to that word. For that reason, the Domain Name is
confusingly similar with the Trademarks.
See Para-Flight Inc. v.
Glen Little, AF-0272 (eResolution August 16, 2000).
Complainant has
satisfied the requirements of Paragraph 4(a)(i) of the Policy.
It is difficult
for any complainant to prove that a respondent has no rights or legitimate
interests in a domain name. For the
most part, that information is known to and within the control of the
respondent. Accordingly, the burden on
a complainant in respect of this element must be relatively light.
Nonetheless, a
complainant bears the burden of proving all of the required elements
contemplated in Paragraph 4(d) of the Policy.
In this case, the Complainant must provide some evidence tending to show
that Respondent has no rights or legitimate interests in
the Domain Name. Complainant could have conducted searches
in trademark and corporate registries in Respondent’s home jurisdiction to determine
whether
or not Respondent has registered, applied for, or claimed rights in any
trademarks or business names that incorporate the word INFOUSA. Copies of those searches could have been
tendered in evidence.
However,
Complainant has not provided any evidence on these issues. It is not sufficient for Complainant merely
to assert that Respondent has no rights or legitimate interests in respect of
the Domain
Name and that Respondent cannot claim the benefit of Paragraph 4(c)
of the Policy.
Respondent has
made assertions that he has made some preparations to use the Domain Name in
connection with the provision of information
over the Internet. Respondent has also tendered some evidence
showing that he has operated websites, which are accessed using different
domain names,
that offer information and services similar to those for which
Respondent says he wants to use the Domain Name.
Respondent’s
evidence prevails over Complainant’s unsupported assertions. See Reading Is Fundamental, Inc v. Mark Watkins, D2001-0832 (WIPO Sept.
10, 2001). In any event, even if this
issue was to be determined merely as a contest of competing assertions made by
both sides, Respondent would
prevail because Complainant bears the burden of
supporting its assertions with some evidence, however minimal.
Complainant has
failed to meet its burden under Paragraph 4(a)(ii) of the Policy.
Complainant’s
submissions on the issue of bad faith are, for the most part, a recital of the
considerations in Paragraph 4(b) of the
Policy. None of Complainant’s assertions are supported by any evidence.
Complainant has
asserted that it has continually used the Trademarks since 1996 and that the
Trademarks are distinctive and famous.
However, Complainant has not provided any evidence to support these
assertions.
Complainant
asserts that Respondent has not made any use of the Domain Name. In some circumstances (e.g. if a
complainant’s trademark has a strong reputation and is widely known, and the
respondent provided
no evidence of any actual or contemplated good faith use of
the domain name, and the respondent took steps to conceal its true identity),
non-use of a domain name might serve as evidence of bad faith. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.
18, 2000). However, Complainant has not
provided any evidence to support its assertion that the Trademarks are famous,
have a strong reputation,
or are widely known.
Complainant has
also failed to provided any evidence in support of its assertions that
Respondent attempted to sell the Domain Name
for profit, engaged in a pattern
of conduct depriving others of the ability to obtain domain names corresponding
to their trademarks,
is a competitor of Complainant seeking to disrupt
Complainant's business, is using the Domain Name to divert Internet users for
commercial
gain, or in any other way registered and used the Domain Name in bad
faith.
Although
Respondent admits that he has not yet started to use the Domain Name, he
asserts that he is acting in good faith and he provides
some evidence in
support of that assertion. There is no
evidence before the Panel calling into question the credibility of Respondent.
In the context
of this factual matrix, Respondent’s admission that he has not used the Domain
Name to this time is insufficient to
prove bad faith. See Societe des
Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12,
2001).
Complainant has
also observed that Registrant registered the Domain Name shortly after the
sunrise period. However, that fact
alone is not evidence of bad faith.
The
Complainant has failed to meet its burden under Paragraph 4(a)(iii) of the
Policy.
DECISION
Having
considered all three elements required under ICANN Policy, the Panel concludes
that relief shall be DENIED.
Robert A. Fashler, Panelist
Dated: August 22, 2003
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