DECISION

PS Engineering, Inc. v. Daniel Delisle

Claim Number:  FA0404000263532

PARTIES

Complainant is PS Engineering (“Complainant”), represented by Dwayne K. Goetzel of Meyertons, Hood, Kivlin, Kowert & Goetzel, P.C., 700 Lavaca, Suite 800, Austin, TX 78701.  Respondent is Daniel Delisle (“Respondent”), 1771 Av Glendale, Outremont, PQ H2V 4V6 Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <intellivox.com>, registered with Network Solutions, Inc.

PANEL

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically April 28, 2004; the Forum received a hard copy of the Complaint April 28, 2004.

On May 3, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <intellivox.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On May 3, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 24, 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@intellivox.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 June 1, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <intellivox.com>, is identical to Complainant’s INTELLIVOX mark.

2. Respondent has no rights to or legitimate interests in the <intellivox.com> domain name.

3. Respondent registered and used the <intellivox.com> domain name in bad faith.

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

FINDINGS

Complainant, PS Engineering, Inc., manufactures aircraft intercom equipment, namely aircraft audio selector panels and aircraft intercoms, which are sold in the United States and worldwide.  Complainant has used the INTELLIVOX mark since early 1998. 

Complainant applied for trademark registration for the INTELLIVOX mark October 24, 1997.  Complainant received a trademark registration for its mark from the United States Patent and Trademark Office for the INTELLIVOX mark (Reg. No. 2,449,464, issued May 8, 2001).

Respondent registered the disputed domain name June 21, 2001.  Respondent is not using the domain name in connection with any goods or services and no website can currently be accessed through the domain name.

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 to and/or Confusingly Similar

Complainant has established using extrinsic proof in this proceeding that it has rights in the INTELLIVOX mark through registration with the United States Patent and Trademark Office and by continued use of its mark in commerce for the last six years. 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).

The domain name registered by Respondent, <intellivox.com>, is identical to Complainant’s INTELLIVOX mark, because the only difference between the two is the addition of the generic top-level domain name (“gTLD”) in the domain name.  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 Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000), ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com."); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the mark that is contained in its entirety in the domain name registered by Respondent.  Further, Complainant alleged in this proceeding that Respondent has no such rights to or legitimate interests in the <intellivox.com> domain name that contains in its entirety Complainant’s INTELLIVOX mark.  Therefore, burden has shifted to Respondent to show that it has rights to or legitimate interests in the domain name containing Complainant’s mark.  Once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii), a Respondent must present evidence to overcome the allegations.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts).

This Respondent is attempting to wholly appropriate Complainant’s mark and has passively held the domain name using Complainant’s mark since the time of registration.  The Panel finds that this use of a domain name identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); 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”).

Nothing in the record, including the WHOIS domain name registration information, suggests that Respondent is commonly known by the domain name or by Complainant’s mark 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Complainant fulfilled Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent intentionally registered the domain name <intellivox.com> that contains in its entirety Complainant’s mark.  Respondent has failed to market any bona fide goods or services since the disputed domain name was registered.  Respondent’s passive holding of a domain name identical to Complainant’s mark evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

Respondent’s registration of the domain name, a domain name that incorporates Complainant’s registered mark in its entirety, suggests that Respondent knew of Complainant’s rights in the INTELLIVOX mark at the time of registration.  Respondent registered the domain name approximately six weeks after Complainant’s registration of the mark was approved by the United States Patent and Trademark Office.  Thus, the Panel finds that Respondent likely chose the <intellivox.com> domain name based on the distinctive qualities of Complainant’s mark.  See 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); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

The Panel finds that Complainant fulfilled 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 <intellivox.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: June 15, 2004.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/748.html