DECISION

InfoSpace, Inc. v. Michele Dinoia c/o SZK.com

Claim Number: FA0311000213574

PARTIES

Complainant is InfoSpace, Inc. (“Complainant”) represented by Gerard A. Taylor, of Stokes Lawrence, P.S., 800 Fifth Ave., Suite 4000, Seattle, WA 98104.  Respondent is Michele Dinoia c/o SZK.com (“Respondent”) represented by Valerio Donnini, 188 Via P. Gobetti, Pescara, PE, Italy.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wwwauthorize.net>, registered with Onlinenic, 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.

M. Kelly Tillery, Esquire as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 20, 2003; the Forum received a hard copy of the Complaint on November 24, 2003.

On November 23, 2003, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <wwwauthorize.net> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 December 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 19, 2004 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@wwwauthorize.net by e-mail.

A timely Response was received and determined to be complete on January 16, 2004.

A timely Additional Submission was received from Complainant and was determined to be complete on January 16, 2004.

An untimely Additional Submission was received from Respondent on January 23, 2004.

On January 26, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery, Esquire as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that:

1.            it is a global provider of wireless and Internet software and application services to the leading wireless and broadband providers, websites and merchant resellers providing directory services, offering access to information about various subjects via the Internet, search engines for obtaining data on the Internet, and for brokerage of electronic commerce transactions conducted via the Internet;

2.            it and its predecessor in interest, Go2Net, Inc., have been using a family of marks that each incorporate the AUTHORIZE.NET designation since at least as early as November 1996, in connection with their services in the U.S. and worldwide;

3. it has invested substantial resources and several millions of dollars in

promoting its services in connection with said marks;

4.            as a result of its extensive use, advertising and promotional efforts, its AUTHORIZE.NET marks are well‑known and are recognized by consumers around the world as signifying and representing services;

5.            it is the owner of the following United States Trademark Registrations:

Mark	Registration No.	International Class(es)	First Use	Goods/Services
AUTHORIZE.NET	2,422,317	009. 036	November 1996	Computer software for use in electronic authorization, processing and management of credit card and electronic check transactions conducted via a global computer network, in Class 009. Global financial services in the nature of electronic authorization, processing, and management of credit card and electronic check transactions via a global computer network, in Class 036.
AUTHORIZE.NET	2,749,994	036	November 1996	Financial services in the nature of electronic authorization, processing, and management of credit card and electronic check transactions via a global computer network.
AUTHORIZE.NET WHERE THE WORLD DOES BUSINESS ON THE WEB & Design	2,441,859	009, 036	November 1996	Computer software for use in electronic authorization, processing and management of credit card and electronic check transactions conducted via a global computer network, in Class 009. Global financial services in the nature of electronic authorization, processing, and management of credit card and electronic check transactions via a global computer network, in Class 036.

Mark	Registration No.	International Class(es)	First Use	Goods/Services
AIRPAY BY AUTHORIZE.NET	2,746,969	009, 036	July 21, 2001	computer software for facilitating financial transactions in the fields of electronic payments and electronic software sales that may be downloaded from wireless and global computer networks, including the internet, in Class 009. Processing and transmission of electronic payments and payment information via wireless and global communication networks, including the internet, in Class 036.
POCKET AUTHORIZENET	2,685,523	009, 036	December 17, 2000	Computer software, namely, a software application for use with electronic authorization, processing, and management of credit card transactions via telephone and global communication networks, including the internet, in Class 009. Global financial services in the nature of electronic authorization, processing, and management of credit card transactions via telephone and global communication networks, including the internet, in Class 036.

6.            it also offers these services and software via its Internet websites located at the domain names <authorize.net> and <authorizenet.com>;

7.            Respondent has registered the domain name <wwwauthorize.net>, which is substantially identical and/or confusingly similar to Complainant's marks and domain names.

8.            Respondents addition of "www" does not materially change the commercial impression of the domain name;

9.            the term "AUTHORIZE.NET" has no common meaning in the Internet context other than as an indicator of the source of Complainant's services;

10.            Respondent registered the <wwwauthorize.net> domain name on June 21,

2003, more than six years after Complainant began using its mark and domain names;

11. Respondent has never been known by or operated a business under the

AUTHORIZE.NET mark or <wwwauthorize.net> name and has no trademark or service mark rights in the terms;

12. Respondent has no relationship to Complainant and is not authorized to use the

mark or any variations thereof;

13. Respondent selected the <wwwauthorize.net> for purposes of generating

business to its company and diverting traffic to a commercial website by capitalizing on the public's familiarity of Complainant's well‑known mark;

14. Respondent is using the disputed domain name to redirect Internet users to a

website that is unrelated to Complainant's mark;

15.            Respondent has registered a domain name substantially identical and confusingly similar to Complainant’s mark to divert Internet traffic to an Italian language website that has absolutely no connection to Complainant, nor Complainant's registered mark;

16.            there is no indication that Respondent has ever been known by the AUTHORIZE.NET mark or <wwwauthorize.net>.

B. Respondent

Respondent contends that:

1. Complainant’s mark is based on a common descriptive term;

2.            the individual terms of Complainant’s asserted mark are at best descriptive, and hence unprotectible without proof of acquired distinctiveness or secondary meaning;

3.            Complainant’s only evidence on the issue of acquired distinctiveness or secondary meaning is in the nature of product reviews or websites offering Complainant’s products for sale;

4.            there is no evidence (or allegation) of any special association of the mark with Complainant’s business, no evidence (or allegation) of any investment in the mark by way of use or advertising, no evidence (or allegation) of the value of the business conducted under the mark, and no evidence (or allegation) that Respondent or the Domain Name has diverted customers from Complainant;

5.            Complainant has provided no evidence to support its assertion that <authorize.net>  has become distinctive of Complainant or of its goods or services;

6.            the contested domain name is not confusingly similar to Complainant’s mark, as the existence of the prefix “www” is sufficient to an Internet customer to be aware of the fact that Respondent’s site has no connection with the Complainant;

7.            Respondent is the CEO of an Italian company named Piazza Affari, Srl, which has operated barter trade in Italy since 2001;

8.            Respondent’s company is not a competitor to Complainant and it uses the domain name - <wwwauthorize.net> - to redirect its clients to the home page of its main website, <piazzaaffari.com>;

9.            the domain name was chosen because of the word “authorize,” that is the keyword used by Respondent’s company and its clients in the exchange of goods and services in barter exchange which must have an authorization (i.e. the “authorize” order) from Respondent’s company, as well as from the goods or services supplier, to be completed;

10.            Respondent has been using the domain name for its business, which is not run in concurrence to Complainant; such use of the domain name, which started well before the commencement or even before any notice of this dispute, is actually made in connection with a bona fide offering of services to Respondent’s clients, without intention to tarnish the trademark or to misleadingly divert consumers;

11.            Respondent was and is using the domain name in connection with a bona fide offering of a service to clients;

12.            Respondent has a demonstrable legitimate interest in the disputed domain name, for its business model, because the domain name is comprised of generic terms that are legitimately open for registration as domain names on a first come, first served basis;

13.            Consumers, who see Respondent’s site, are not likely to believe that the site has any connection with Complainant;

14.            Respondent has no intent to divert consumers or to tarnish the trademark at issue that it cannot be considered as a competitor to Complainant, which does not direct its business to the Italian market;

15.            the contested domain name was registered in good faith by Respondent and there is no direct evidence that Respondent, living in Italy, was aware of Complainant or its mark, which was registered only in the USA at the time Respondent registered the Domain Name;

16.            there is no evidence in the record that Respondent had actual notice of Complainant’s mark;

17.            the filing of the Complaint constitutes an effort to obtain <wwwauthorize.net> from a legitimate good faith registrant and is an attempt to acquire by administrative action what it simply is not entitled to.  In fact, although Complainant’s counsel was made aware of the use of the domain name and of Respondent’s business it filed the Complaint; this conduct is likely to be a pattern of reverse domain name hijacking, since no reason or evidence was brought by Complainant to justify that behavior.

C. Additional Submissions

Complainant filed a timely Additional Submission on January 16, 2004 repeating many of the arguments made in the Complaint and adding some additional legal citation regarding typosquatting.

Respondent filed an Additional Submission after the deadline for submissions.  Same will not be considered.

FINDINGS

1.      Complainant has met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain name is confusingly similar to a mark in which Complainant has rights.  Policy ¶ 4(a)(i).

2.      Complainant has not met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent has no rights or legitimate interest in respect to the domain name. Policy ¶ 4(a)(ii).

3.      Complainant has not met its burden to prove by a preponderance of the credible, relevant, admissible evidence that Respondent’s domain name has been registered and is being used in bad faith. Policy ¶ 4(a)(iii).

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 does not dispute that Complainant owns at least two (2) valid/live U.S. Patent and Trademark Office registrations for the mark AUTHORIZE.NET as well as three other U.S. Patent and Trademark Office registrations for “authorize.net” related marks.  Respondent merely claims that these marks are generic or at best descriptive and Complainant has submitted no evidence to establish acquired distinctiveness or secondary meaning.  The U.S. Patent and Trademark Office Certificate of Registrations are prima facie evidence of trademark rights and therefore this Panel finds that Complainant does have trademark rights in and to the mark AUTHORIZE.NET.  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.  Respondent has the burden of refuting this assumption).

Respondent has not produced sufficient evidence and/or authority to support any finding that the mark is generic.

The <wwwauthorize.net> domain name, while not identical to the AUTHORIZE.NET mark, is certainly confusingly similar thereto since the “www” prefix is an abbreviation for the “World Wide Web” and such prefixes are regularly dismissed in such an analysis as well as by the Internet consumer when reviewing same.  See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark).

Under these circumstances, Complainant has met its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent’s domain name is identical or confusingly similar to a mark in which Complainant has rights.  Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has established that before any notice to it of this dispute, it actually used the domain name in connection with a bona fide offering of goods or services.  Under these circumstances, Complainant has not met its burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent has no rights or legitimate interest in respect to the domain name.  Policy ¶ 4(a)(ii).  See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when Respondent does file a Response, Complainant must allege facts, which if true, would establish that Respondent does not have any rights or legitimate interests in the disputed domain name); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by Complainant that establish Respondent lacks rights or legitimate interests in the disputed domain name, the Panel may decline to transfer the disputed domain name); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (stating that “[b]y September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating "a bona fide offering of goods and services").

Registration and Use in Bad Faith

Respondent has established that it is a legitimate business and has been using the domain name substantially prior to being put on notice of this dispute.  Complainant has not established that Respondent registered the domain name or is using it in bad faith.  Complainant has established none of the possible scenarios set forth in Policy ¶ 4(b)(iv).  See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent successfully rebutted Complainant’s averments that it registered and used the domain name at issue in bad faith and that Complainant produced no credible evidence of bad faith on the part of Respondent); see also DJF Assocs., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).

Under all of these circumstances, Complainant has not met is burden to prove by a preponderance of the credible, relevant and admissible evidence that Respondent’s domain name was registered and used in bad faith.  Policy ¶ 4(a)(iii).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that the relief requested shall be DENIED.

M. KELLY TILLERY, ESQUIRE, Panelist

Philadelphia, PA
Dated: February 15, 2004

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