WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
InfoS, Inc. v. Tenenbaum Ofer
Case No. D2000-0075
1. The Parties
Complainant is InfoS, Inc., a Delaware corporation located in Redmond, Washington, USA
2. The Domain Name and Registrar
The domain name is
The registrar is Network Solutions, Inc., Herndon, Virginia, USA
3. Decision
On April 4, 2000, this Panel entered Procedural Order No. 1, attached as an Appendix to this decision. The basic facts of the case are set forth in the Procedural Order and incorporated here by reference. The purpose of the Procedural Order was to give Respondent an additional ten days to submit evidence in support of its claim that it registered the domain name with a legitimate interest in developing a non-commercial site for use by family members to remain in contact while traveling. Because the Respondent was dealing with unfamiliar procedures and claimed it could submit legal proof of its legitimate interest, I exercise my discretion under Rule 12 of the ICANN Rules to give Respondent time to submit such proof. That time has now passed without any submission of proof by Respondent. Therefore I will issue this opinion without the benefit of that evidence from the Respondent.
The only evidence of record supporting Respondent�s position is undated copies of emails apparently sent by Respondent to Complainant after this dispute arose, but I cannot tell from the submissions when or if these emails were actually sent. One of the email messages states: "We don�t want to sell the domain and are not after your money or anything like that. We want to use the domain name for our own project which has nothing to do with your industry or market space." As discussed below, Complainant does not rely on an offer to sell the domain name as the bases for its claim.
The domain name is identical to Complainant�s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.
It appears that Respondent lacks any rights or legitimate interest in the domain name. It has not presented any evidence of demonstrable plan prior to the dispute to make use of the domain name for a bona fide offering of goods or services. Moreover, Respondent is not known by the name and Respondent has not made noncommercial or fair use of the domain name.
The selection of is not obvious corroboration of Respondent�s claim that the name was selected for use as a family intranet site. Although "info-space" suggests a location for distributing information, it does not seem directly descriptive of the services in which Respondent claims an interest. One can imagine other names that would be more apt. The hyphenated name selected by Respondent seems an unlikely choice for that purpose.
As noted above, Respondent has failed to follow through with its offer to provide legal proof that it adopted registered the domain name in good faith. Because of that failure, Respondent�s claim of a prior intent to use the name for a noncommercial family intranet site lacks credibility. The failure to present supporting evidence under the procedural circumstances of this case also causes me to doubt Respondent�s claim that he had no intent to profit from registering a domain name that is identical Complainant�s registered mark and domain name.
Under Paragraph 4(b) of the Policy, evidence of bad faith registration and use includes:
(i) registration of the domain name for the purpose of resale to the trademark owner or competitor for profit;
(ii) a pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;
(iii) registration of the domain name for the purpose of disrupting the business of competitor; or
(iv) use of the domain name to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with the complainant�s mark.
The passive holding of a domain name for any of these purposes may be sufficient to meet the use requirement of Paragraph 4(b). See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003.
Complainant contends that the evidence supports a finding of bad faith under 4(b)(iii) and (iv). Complainant�s allegation under (iii) is supported by the facts showing that: (a) its web site is well known and widely used in the Internet community; (b) is likely to be confused by persons seeking Complainant�s site; and (c) Respondent�s site has lain fallow. Complainant�s allegation under (iv) is supported by facts showing that: (a) INFOSPACE is a well-known mark and web site in the Internet community; and (b) anyone who uses a search engine to find INFOSPACE is likely to be given a link to Respondent�s site with the result that Respondent may profit by deliberately creating a likelihood of confusion with Complainant�s mark. On the question of fame, evidence submitted by Complainant indicates that Complainant�s affiliate network includes 2,500 portals, including 4 of the top 5 most trafficked sites on the Internet. In the fourth quarter of 1999 alone, Complainant states that it and its affiliates had about 1.7 billion page views. Respondent has offered no probative evidence to rebut any of the facts presented by Complainant.
I find that the evidence submitted by Complainant is insufficient to show bad faith under subparagraph 4(b)(iii). There is no evidence to show that Respondent is a competitor seeking to disrupt Complainant�s business. However, I find that Complainant has met its burden under subparagraph 4(b)(iv) because its appears more likely than not from the evidence offered by Complainant that Respondent has registered the domain name in a deliberate attempt to attract users to its planned web site for commercial gain due to confusion with Complainant�s mark. Respondent has failed to rebut that evidence with any competent evidence or verified statement of fact despite having been given additional time and a specific invitation from this Panel for that specific purpose. Had Respondent presented any of the evidence it claimed it had, perhaps my conclusion would be different, but Respondent�s unsupported and unverified argument is inadequate when weighed against the factual support presented by Complainant.
4. Conclusion
Based on the evidence presented, I conclude that (a) the domain name is identical to the trademark INFOSPACE, (b) Respondent has no rights or legitimate interest in the domain name, and (c) Respondent registered and used the domain name in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the domain name should be transferred to Complainant.
Mark V. B. Partridge
Presiding Panelist
Date: April 27, 2000
Appendix
ADMINISTRATIVE PANEL
PROCEDURAL ORDER NO. 1
InfoS, Inc. v. Tenenbaum Ofer
Case No. D2000-0075
1. The Parties
Complainant is InfoS, Inc., a Delaware corporation located in Redmond, Washington, USA
Respondent is Tenenbaum Ofer, an individual located in San Jose, California, USA
2. The Domain Name(s) and Registrar(s)
info-s
The registrar is Network Solutions, Inc., Herndon, Virginia, USA
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The complaint was filed on February 17, 2000, and sent to Respondent on February 13, 2000, with notice that the last day to submit a response was March 13, 2000. Respondent provided email responses to the Complainant on February 23, 2000, and March 16, 2000.
4. Factual Background
Complainant is a provider of internet content, such as directory services, maps, classified advertisements, stock quotations, local business information, weather forecasts and horoscopes. Complainant has registered the domain name and operates a web site at that address. Complainant is also the owner of several U.S. registrations and applications for the INFOSPACE mark, including Reg. No. 2,121,439, dated December 16, 1997, and Reg. No. 2,206,397, dated December 1, 1998. The later registration provides Complainant with nationwide rights as of November 4, 1996, the filing date of the application.
Respondent registered the domain name on December 20, 1998. The only information at Respondent�s site has been an error message indicating the site is not accessible.
Respondent claims that is "part of our Kansas - 2nd home project started in late 1994." According to Respondent, the purpose of the space is to serve families spread over the world who need the ability to keep in touch when traveling as a sub site of a web site respondent will operate at .
5. Parties� Contentions
Complainant contends that respondent has registered the domain name for the purpose of trading on Complainant�s name and mark.
Respondent claims that it registered the domain name for the purpose of operating a noncommercial site for families.
6. Discussion
The first issue is whether the Panel will consider Respondent�s March 16, 2000, submission, made three days after the deadline for response. Under the Rules, this determination is solely within the discretion of the Panel. Rule 10(a), (d). See also WIPO Notification of Complaint and Commencement of Administrative Proceeding ("Notification of Commencement") 6 ("The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so."). Where a response is filed before the appointment of the panel and there is no prejudice to the Complainant, other Panels have considered late responses. See Talk City, Inc. v. Michael Robertson, WIPO Case Number D2000-0009 (February 29, 2000). Applying that principle here, we will consider Respondent�s March 16, 2000, response.
The next issue is whether the facts asserted in Respondent�s February 23 and March 16, 2000, may be considered on the merits. Neither response contains the certification required by the Rules. A similar situation was addressed in Talk City, Inc. v. Michael Robertson, WIPO Case Number D2000-0009 (February 29, 2000), where the Panel stated:
After considering Respondent�s February 16 e-mail, the Panel has concluded that it will not accord any weight to the facts alleged in it. That is because Respondent�s e-mail did not contain any certification that the information contained in the e-mail was, "to the best of Respondent�s knowledge complete and accurate." Rule 5(b)(viii). Without the benefit of this certification, it is not appropriate to accept the factual assertions contained in the e-mail. Although the Panel is granted discretion to consider late responses, it is not granted similar discretion to waive the Rule 5(b)(viii) certification requirement. Moreover, given that we still are in the early stages of the ICANN uniform dispute resolution process, it is arguably even more important than usual to insist on strict compliance with the Rules. Inconsistent approaches to the Rules will only cause a loss in confidence in the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the Rules promulgated by ICANN.
We agree with the reasoning of the Talk City decision. However, unlike the Talk City case, where the Respondent was represented by counsel, the respondent here is an individual who has made a pro se response which asks for the opportunity to provide legal proof. More specifically, respondent has suggested in its responses that it can provide legal proof that it made demonstrable preparations to use the domain name in connection a bona fide offering of noncommercial services which may predate this dispute or Complainant�s rights in its mark. If this is true, Respondent may be able to demonstrate a legitimate interest in the domain name and Complainant would not be entitled to a transfer of the domain name.
This situation presents the Panel with several options. First, we may decide the matter without reference to Respondent�s informal submissions. If that resulted in a decision in favor of the Complainant, the Respondent would loses its domain name or be required to proceed with potentially expensive litigation where it presents the evidence it claims to have. Under the circumstances, we think this would be a wasteful and unfair procedure contrary to intent of the Policy. Respondents attempting in good faith to participate in the Policy should not lose potentially valuable domain name registrations on technicalities.
Another course of action is available under the Rules. Paragraph 12 permits the Panel to request, in its sole discretion, further statements or documents from either of the Parties. Paragraph 15(b) permits the Panel to extend the deadline for a decision in cases involving exceptional circumstances. Although we are reluctant to invoke these provisions because they will involve addition delay in reaching a decision and will impose additional expense on the dispute resolution service provider, we believe the use of these provisions is the best procedure for this case.
We do not condone the failure to submit a certified response supported by evidence in accordance with the rules, particularly since WIPO has gone to great lengths to provide respondents with clear guidelines, but in this case, where the Respondent submitted a timely but technically deficient response, we do not think it would be appropriate to reach a decision without giving the Respondent a further opportunity to submit a statement that complies with Paragraph 5(b) of the Rules. Respondent has appeared without counsel and is dealing with new and unfamiliar rules and procedures. It does not seem that Respondent has deliberately flaunted the Rules to gain any tactical advantage and we do not believe that Complainant will be unduly prejudiced by the additional time involved by permitting Respondent to make a formal response.
7. Conclusion
For the reasons stated above, we exercise our discretion under the Paragraphs 12 and 15(b) of the Rules to permit the Respondent to file a formal response to the Complaint within ten days after Notice of this interim decision. The response should comply with the requirements of Paragraph 5(b) of the Rules, including the signed statement required under Paragraph 5(b)(viii) and including any documentary or other evidence upon which the Respondent relies permitted under Paragraph 5(b)(ix).
Mark V. B. Partridge
Presiding Panelist
Date: April 4, 2000
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