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Generic Top Level Domain Name (gTLD) Decisions |
IntelliTrack Inc. v manager, admin
Claim Number: FA0411000362178
PARTIES
Complainant
is IntelliTrack Inc. (“Complainant”),
represented by Michael D Oliver, of Bowie & Jensen LLC,
29 W. Susquehanna Ave., Suite 600, Towson, MD 21204. Respondent is manager,
admin (“Respondent”), P.O. Box 906, El Segundo, CA 90245-0906.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <intellitrack.com>,
registered with Network Solutions.
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.
Linda
M. Byrne as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
9, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 12, 2004.
On
November 12, 2004, Network Solutions confirmed by e-mail to the National
Arbitration Forum that the domain name <intellitrack.com>
is registered with Network Solutions and that the Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions
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
November 16, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 6, 2004, by which Respondent could file a Response to the
Complaint, was transmitted to Respondent
via e-mail, post and fax. The Commencement Notification was
transmitted to all entities and persons listed on Respondent’s registration as
technical, administrative
and billing contacts, and to postmaster@intellitrack.com
by e-mail.
A
Response was received on December 7, 2004; and exhibits for the Response were
received on December 9, 2004.
On December 15, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Linda M. Byrne as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that Respondent's <intellitrack.com> domain name is
confusingly similar to its INTELLITRACK trademark; that Respondent does not
have any rights or legitimate interest
with respect to the domain name; and
that the infringing domain name was registered and being used by Respondent in
bad faith.
B.
Respondent
Rule
5(a) of the Uniform Domain Name Dispute Resolution Policy requires a response
to be submitted within 20 days of the date of commencement
of the
proceeding. The Response was received
on the day after the deadline for response.
In this type of situation, the Panel is under no obligation to accept
the late Response. See Telstra
Corp. v. Chu, D2000-0423 (WIPO June 21,
2000) (finding that any weight to be given to the lateness of the Response is
solely in the discretion
of the Panelist); but see Univ. of Alberta v. Katz, D2000-0378
(WIPO June 22, 2000) (finding that a Panel may consider a response which was
one day late, and received before a Panelist
was appointed and any
consideration made). Because Respondent e-mailed its Response only a few hours
into the 21st day, the Panel
has chosen in its discretion to consider the late
Response.
Furthermore,
Respondent submitted additional appendices three days after the formal deadline
set forth pursuant to ICANN Rule 5(a).
It is within the Panel’s discretion whether or not to consider
Respondent’s late appendices in deciding this case. The Panel has determined that Respondent’s exhibits were not filed
on a timely basis, and the Panel has therefore not considered Respondent’s
exhibits.
In
its Response, Respondent does not dispute that <intellitrack.com>
is confusingly similar to Complainant's INTELLITRACK mark. Respondent contends, however, that it
registered the <intellitrack.com> domain name in connection with a
bona fide business, and that Respondent did not register and use the
domain name in bad faith.
C.
Additional Submissions
A
timely Additional Submission was received from Complainant on December 13,
2004. This Additional Submission was
considered by the Panel.
The
panel received Respondent’s Supplemental Response on December 20, 2004. With respect to Respondent’s request to
strike Complainant’s Supplemental Submission, this request is denied as the
Supplemental Submission
was timely.
With respect to Respondent’s opposition to Complainant’s Request to
strike Respondent’s Response, this issue is moot as the Respondent’s
Response
was considered. The remainder of the
Respondent’s Supplemental Response is found to be unpersuasive in view of the
below Findings and Discussion.
FINDINGS
The Complainant owns a U.S. trademark
registration for INTELLITRACK (U.S. Reg. No. 1,938,760). This registration covers a “bar code data
collection system, namely bar code computer hardware and software with
instruction manuals
for collecting and managing data.” The date of first use is October 1989. Complainant has expended over $600,000 in
marketing and other costs to promote the INTELLITRACK brand, has licensed over
12,000 copies
of its INTELLITRACK software, and distributes the software
throughout the world.
When an Internet user accesses the <intellitrack.com>
domain name, the screen features the headline “intellitrack.com What you need, when you need it.” The screen features a list of links to third
party websites, such as HDTV programming, refinancing services, long distance
learning
services, etc. The left side
of the screen shows the word “Intellitrack” under the headings “Popular Links”
and “Related Links.”
The <intellitrack.com>
domain name had been owned by a third party who failed to renew the domain
name. The registrar placed the domain
name for sale in a public auction, and Respondent secured the domain name with
the highest bid on
or about November 10, 2004.
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.
Respondent does not argue that there is no
confusing similarity between Complainant’s INTELLITRACK mark, as compared to
the <intellitrack.com>
domain name, but Respondent argues that its business is distinct from
Complainant’s business.
Complainant’s INTELLITRACK mark is the subject
of a U.S. trademark registration and is therefore presumed to be valid. See Men’s
Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently
distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive, such
that Respondent has the
burden of refuting this presumption).
The
domain name incorporates Complainant’s mark in its entirety. The mere addition of a generic top-level
identifier is insufficient to distinguish the domain name from Complainant’s
mark. See 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); see
also 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).
This panel concludes that the domain name
<intellitrack.com> is confusingly similar to Complainant’s
INTELLITRACK mark.
Since it securing the disputed domain
name on or around November 10, 2004, Respondent states that it has used the
<intellitrack.com> domain name in connection with “its people
search and location business site.” The
Respondent states that its use of <intellitrack.com> is consistent
with the Respondent’s other websites located at the
<www.intelisearch.com>, <www.intelifind.com> and
<www.inteliseek.com> domain names.
However,
the domain name appears to direct users to other unconnected commercial
websites, which does not constitute a legitimate
business for purposes of this
proceeding. AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000). Respondent’s website links to non-competing
web pages where third parties offer a variety of products and services such as
mortgage
services. It appears that
Respondent is charging a fee for providing links to these commercial sites of
third parties. In UGG Holdings, Inc. v. WebQuest.com, Inc., FA 335456 (Nat. Arb.
Forum Dec. 8, 2004), the Panel stated:
Commercial
use of domain names that are confusingly similar to another’s mark does not
constitute a bona fide offering of goods or
services pursuant to Policy 4c(i)
or a legitimate noncommercial or fair use pursuant to Policy 4c(iii). See Black
& Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June
24, 2002) holding that Respondent’s use of the disputed domain name to redirect
Internet users to
commercial websites, unrelated to Complainant and presumably
with the purpose of earning a commission or pay-per-click referral fee
did not
evidence rights or legitimate interests in the domain name.
Moreover,
the Respondent is not commonly known by the domain name, and the Respondent
lacks rights and legitimate interests in the
domain name pursuant to Policy
¶4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the mark precede Respondent’s registration; (3)
Respondent is not commonly known by the domain
name in question).
Respondent
registered and used the <intellitrack.com> domain name in bad
faith pursuant to Policy ¶ 4(a)(iii) because Respondent had actual or
constructive knowledge of Complainant’s mark
when the domain name was
registered. Registration of a domain
name confusingly similar to another’s mark, despite knowledge of the mark
holder’s rights, is evidence of
bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal
presumption of bad faith, when Respondent reasonably should have been
aware of
Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly
known mark at the time
of registration).
Respondent’s
bad faith is further evidenced by the fraudulent nature of the original WHOIS record, which contains
erroneous telephone, ownership and physical address information. It contains no human or entity information
as the registrant, it lists the phone number as a zip code, and the PO is owned
by a company
known as “BMC<” which is unrelated to this proceeding. This false contact information obscures the
Respondent’s activities and evidences bad faith. See Mattel, Inc. v. KPF,
Inc., FA 244073 (Nat. Arb. Forum Apr. 2, 2004).
Complainant
asserts that Respondent has appropriated Complainant’s mark in the <intellitrack.com>
domain name to compete with Complainant.
The Panel does not render an opinion on this issue because it is
unnecessary to do so in reaching a decision in this case.
The
Panel concludes that Respondent’s commercial use of the confusingly similar
domain name constitutes bad faith registration and
use under Policy ¶
4(b)(iv). See State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe
on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that Respondent registered and used the domain name in bad faith
pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <intellitrack.com>
domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: December 28, 2004
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