DECISION

InfoSpace, Inc. v. Martin Franze, Inc. c/o Martin Franze

Claim Number:  FA0401000226443

PARTIES

Complainant is InfoSpace, Inc., Bellevue, WA (“Complainant”) represented by Pallavi Mehta Wahi, of Stokes Lawrence P.S., 800 Fifth Ave., Suite 4000, Seattle, WA 98104-3179.  Respondent is Martin Franze, Inc. c/o Martin Franze, P.O. Box 2633 Aspen, CO 81611 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <freeauthorizenet.com> and <free-authorizenet.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 14, 2004; the Forum received a hard copy of the Complaint on January 16, 2004.

On January 30, 2004, Innerwise, Inc. d/b/a Itsyourdomain.com confirmed by e-mail to the Forum that the domain names <freeauthorizenet.com> and <free-authorizenet.com> are registered with Innerwise, Inc. d/b/a Itsyourdomain.com and that Respondent is the current registrant of the names. Innerwise, Inc. d/b/a Itsyourdomain.com has verified that Respondent is bound by the Innerwise, Inc. d/b/a Itsyourdomain.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 January 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 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@freeauthorizenet.com and postmaster@free-authorizenet.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On March 1, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <freeauthorizenet.com> and <free-authorizenet.com> domain names are confusingly similar to Complainant’s AUTHORIZE.NET mark.

2. Respondent does not have any rights or legitimate interests in the <freeauthorizenet.com> and <free-authorizenet.com> domain names.

3. Respondent registered and used the <freeauthorizenet.com> and <free-authorizenet.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant itself, and through its predecessor in interest, has been using a family of marks, each containing the primary AUTHORIZE.NET mark, since as early as 1996.  Specifically, Complainant has registered the following marks with the United States Patent and Trademark Office (“USPTO”): AUTHORIZE.NET (Reg. No. 2422317, Jan. 16, 2001), AUTHORIZE.NET WHERE THE WORLD DOES BUSINESS ON THE WEB & Design (Reg. No. 2441859, Apr. 10, 2001), AIRPAY BY AUTHORIZE.NET (Reg. No. 2746969, Aug. 5, 2003), and POCKET AUTHORIZE.NET (Reg. No. 2685523, Feb. 11, 2003).

The AUTHORIZE.NET marks are used in connection with electronic authorization, processing, and management software and services relating to credit card transactions over the telephone and via the Internet in the U.S. and worldwide. Complainant has invested substantial resources in promoting its services in connection with the marks and, as a result, the marks are well known and recognized by consumers around the world.

Respondent registered the disputed domain name <freeauthorizenet.com> on February 11, 2002.  The domain name’s attached website advertises merchant credit card processing services under the brand name “Total Merchant Services.”  Total Merchant Services, Respondent’s apparent affiliate, is an authorized re-seller of Complainant’s services.

Respodnent registered the disputed domain name <free-authorizenet.com> on February 24, 2003.  The domain name is not connected to an operative website.

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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.

Identical and/or Confusingly Similar

Complainant owns numerous registrations for its AUTHORIZE.NET marks with the USPTO.  Registered marks hold a presumption of distinctiveness; thus, Complainant has established rights in the AUTHORIZE.NET marks. 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 the 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); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves.”).

The disputed domain names <freeauthorizenet.com> and <free-authorizenet.com> incorporate the distinctive element of Complainant’s AUTHORIZE.NET mark because merely omitting the period in the domain names is insufficient to change the mark’s meaning under the Policy. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); cf. Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks . . . does not alter the fact that a name is identical to a mark.").

In addition, both domain names have added the generic term “free” to Complainant’s mark, which also fails to sufficiently distinguish the names from Complainant’s marks. See Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to Complainant’s ICQ mark makes the <neticq.com> domain name confusingly similar to Complainant’s mark).

The addition of the hyphen in the <free-authorizenet.com> domain name and the addition of the generic top-level domain is irrelevant pursuant to the Policy. See Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (“[The] addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen."); see also InfoSpace.com v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a top-level domain is without legal significance).

Therefore, Policy ¶ 4(a)(i) is established for Complainant.

Rights or Legitimate Interests

The Panel construes Respondent’s failure to respond to the Complaint as an implicit admission that Respondent lacks rights to and legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

The evidence before the Panel fails to suggest that Respondent is commonly known by the disputed domain names. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

In regard to the <freeauthorizenet.com> domain name, Respondent is using the name to advertise services that compete with Complainant’s electronic authorization services.  Such use, coupled with the fact that the domain name incorporates the distinctive element of Complainant’s mark, indicates that Respondent is not using the name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

The <free-authorizenet.com> domain name has not been attached to an operative website for over a year.  Without demonstrable preparations to use the domain name in connection with an attached website for over a year, the Panel is comfortable in finding that Respondent is passively holding the domain name, evidence that Respondent lacks rights to and legitimate interests in the domain name. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

Policy ¶ 4(a)(ii) is established for Complainant.

Registration and Use in Bad Faith

The <freeauthorizenet.com> domain name, which is confusingly similar to Complainant’s mark, attaches to a website that offers competing services with Complainant. Such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii) because Respondent registered the name primarily to disrupt the business of a competitor. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business).

Respondent also has used the <freeauthorizenet.com> domain to intentionally attract, presumably for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s AUTHORIZE.NET marks, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

Having failed to attach an operative website to the <free-authorizenet.com> domain name in over a year, the Panel concludes that Respondent is passively holding the name, which, without controvertible evidence, indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

Thus, Complainant has established Policy ¶ 4(a)(iii).

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 <freeauthorizenet.com> and <free-authorizenet.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice Supreme Court, NY (Ret.)

Dated:  March 15, 2004

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