DECISION

InfoSpace, Inc. v. Info Space (HK) Limited a/k/a Cha Suk Jae

Claim Number: FA0307000169055

PARTIES

Complainant is InfoSpace, Inc., Bellevue, WA, (“Complainant”) represented by Shannon M. Jost, of Stokes Lawrence PS.  Respondent is Info Space (HK) Limited a/k/a Cha Suk Jae, Kwun Tong, Hong Kong, China (“Respondent”) represented by Peter Wong, of Peter Wong & Partners, Solicitors.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <infospacehk.com>, registered with Register.Com.

PANEL

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

Anne M. Wallace, Q.C. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 15, 2003; the Forum received a hard copy of the Complaint on July 18, 2003.

On July 15, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <infospacehk.com> is registered with Register.Com and that the Respondent is the current registrant of the name.  Register.Com has verified that Respondent is bound by the Register.Com 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 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 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@infospacehk.com by e-mail.

A timely Response was received and determined to be complete on August 11, 2003.

On August 18, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it has established rights in the INFOSPACE mark through several registrations of the mark with the U.S. Patent and Trademark Office, including Reg. Nos. 2,121,439 (registered December 16, 1997) and 2,206,397 (registered December 1, 1998).  Complainant contends that its rights in the mark are established through several registrations of the INFOSPACE mark with authorities within Respondent’s residence, Hong Kong, including Reg. Nos. B14811 (registered November 8, 2000) and B09042 (registered August 9, 2001).  Complainant further contends that it has established rights in the INFOSPACE mark by using the mark in commerce since 1995.

Complainant alleges that the <infospacehk.com> domain name is confusingly similar to Complainant’s INFOSPACE mark because the disputed domain name fully incorporates Complainant’s mark and merely adds the geographic abreviation for Hong Kong, “hk,” to the mark. 

Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain because Complainant used the INFOSPACE mark in commerce and registered the mark before Respondent’s registration of the disputed domain name.

Furthermore, Complainant contends that Respondent was not authorized to use the INFOSPACE mark and is not commonly known by the <infospacehk.com> domain name, and therefore lacks rights or legitimate interests in the disputed domain name. 

Complainant asserts that Respondent has passively held the disputed domain name since its registration in November 2002 because Respondent has not developed a website for the domain name. 

Complainant contends that Respondent had actual or constructive knowledge of Complainant’s mark because the INFOSPACE mark is known worldwide, and therefore Respondent registered the disputed domain name in bad faith.

Complainant asserts that Respondent has passively held the <infospacehk.com> domain name because the disputed domain name does not resolve to a developed website.  Passive holding of a domain name that infringes on another’s right to a mark is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 

B. Respondent

Respondent respectfully leaves the matter of whether the domain name is identical to or confusingly similar to Complainant’s trademark at the disposal of the Panel. 

Respondent asserts that it has a legitimate interest in the <infospacehk.com> domain name because Respondent has been commonly known by the corporate name Info Space (H.K.) Limited for years. 

Respondent asserts that it has made a bona fide offering of goods or services and/or a legitimate noncommercial or fair use via the <infospacehk.com> domain name because Respondent is engaged in an industry different from Complainant, and therefore Respondent did not intend to cause Internet user confusion or to commercially benefit from the goodwill associated with Complainant’s mark. 

Respondent contends that the phrase “Info Space” is in widespread use and is descriptive.  It appears that Respondent is contending that Complainant’s INFOSPACE mark is generic, and therefore Complainant does not have exclusive rights to the INFOSPACE mark. 

Respondent asserts that its registration and use of the <infospacehk.com> domain name in conjunction with its business does not constitute bad faith because Respondent alleges to have registered and used the disputed domain name without the intent to cause Internet user confusion, to tarnish Complainant’s mark, or to commercially gain from the goodwill associated with Complainant’s mark. 

Moreover, Respondent contends that the phrase “Info Space” is in widespread use and is descriptive.

Lastly, Respondent asserts that Complainant has attempted to reverse hijack the disputed domain name by bringing the Complaint in bad faith. 

FINDINGS

The panel finds that:

1. The Disputed Domain Name <www.infospacehk.com> is confusingly similar to Complainant’s  INFOSPACE trademark.

2. For purposes of the Policy, Respondent has rights or legitimate interests in the Disputed Domain Name.

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

On the evidence before us Complainant has established rights in the INFOSPACE trademark. Respondent does not dispute that the Disputed Domain Name <www.infospacehk.com> is confusingly similar to Complainant’s INFOSPACE mark. We note that the disputed domain name fully incorporates Complainant’s mark and merely adds the geographic abbreviation “hk” for “Hong Kong” to the mark. Merely combining the trademark with a geographic term does not prevent the domain name from being confusingly similar. Complainant therefore succeeds on the first element.

Rights or Legitimate Interests

While Complainant has established trademark rights in the INFOSPACE mark, Respondent has produced evidence that, as early as September 1, 1996, Respondent’s predecessor was using the name Info Space in business in Korea. Respondent submits that on September 1, 1996, the Korean Originator established an unincorporated business in the Republic of Korea, namely “Info Space Unincorporated”, which was, inter alia, a software design house authorized by Samsung. Respondent produced evidence that on July 26, 1999, the Korean Originator and others (the “Korean Partners”) established a limited company, Infospace Co. Ltd. in the Republic of Korea. Respondent produced what purports to be a true copy of the Business Registration Certificate of this corporation together with an English translation of same. Once the corporation was up and running for about a year, the business name Info Space Unincorporated was formally discontinued on May 31, 2000. Respondent produced a copy of the certificate for Business Suspension/Business Discontinuance in that regard.

The Korean Partners with others also incorporated the Respondent. Info Space (H.K.) Limited which operates as a Samsung authorized design house that also provides source codes and technical support to clients based in Hong Kong and the People’s Republic of China. Respondent produced copies of Annual Returns for Info Space (H.K.) Limited for October 2000, 2001 and 2002, along with incorporating documents showing incorporation of Info Space (H.K.) Limited as of October 11, 1999.

Based on the evidence filed, Respondent asserts that while Complainant contends that it has been using the mark INFO SPACE since 1995, Respondent has had legitimate rights in the Info Space name since 1996 when the Korean Originator began Info Space Unincorporated. Since then the Korean Originator and its successors, including Respondent, have been using INFOSPACE in their business and Info Space (H.K.) Limited has been commonly known by this corporate name since at least October 1999.

Based on the evidence before us, Respondent has established that before any notice to it of this dispute, Respondent has used the Info Space Unincorporated name, the Infospace Co. Ltd. name and the Info Space (H.K.) Limited name, all of which are names corresponding to the disputed domain name, <www.infospacehk.com>. These names have been used in connection with the bona fide offering of goods and services, in particular, Respondent’s design house services for Samsung. We also note that Respondent’s business has been commonly known by the domain name in question since at least October of 1999, but that the business has been known as Info Space or Infospace since as early as 1996. Respondent’s business is different from Complainant’s business.

Therefore, within the meaning of Policy 4(c)(i) and Policy 4(c)(ii), Respondent has demonstrated rights or legitimate interests in the disputed domain name.

The Panel also wishes to point out that in any event, the evidence before us establishes that there may be competing claims between Complainant and Respondent to the INFOSPACE mark. It was never the intention of the UDRP to resolve trademark disputes, and in these circumstances, the Panel would rule in favour of the status quo without prejudice to any rights either Complainant or Respondent may have to challenge the rights of the other through other proceedings in the appropriate forum. The UDRP, however, is not the appropriate forum in which to resolve that dispute.

Registration and Use in Bad Faith

Given the finding that Respondent has rights or legitimate interests in the disputed domain name within the meaning of the Policy, the Panel also finds that there is no bad faith use in this case. On the evidence before us, Respondent’s use of the disputed domain name has been in connection with its legitimate business.

With respect to Respondent’s allegations of reverse domain name hijacking, however, on the evidence before us, Complainant appears to be making a sincere attempt to protect its INFOSPACE mark. We do not see this proceeding as an attempt to hijack the disputed domain name.

DECISION

The Panel concludes that relief shall be DENIED and the Complainant’s Complaint is hereby dismissed.

Anne M. Wallace, Q.C., Panelist
Dated: September 2, 2003

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