WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
InfoSpace, Inc. v. Michael Lemieux
Case No. D2000-1476
1. The Parties
The Complainant is InfoSpace, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Redmond, Washington, USA.
The Respondent is Michael Lemieux, with address in Bellevue, Washington, USA.
2. The Domain Name and Registrar
The disputed domain name is "".
The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on October 28, 2000, and by courier mail received by WIPO on October 30, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On November 7, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrar�s Response received by WIPO on November 9, 2000).
(b) On November 15, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.
(c) Respondent�s response was received by WIPO via e-mail on December 6, 2000, and was subsequently received in hard copy. Respondent also transmitted the response to Complainant.
(d) On December 29, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On December 29, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On January 5, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by January 19, 2000. On, January 5, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of service mark registrations for the term "INFOSPACE" on the Principal Register at the U.S. Patent and Trademark Office (USPTO), Reg. No. 2,206, 397, dated December 1, 1998, in International Class 42, covering "computer services, namely providing search engines for obtaining data on a global computer network" and Reg. No. 2,121,439, dated December 16, 1997, in International Classes 9 and 42, covering computer software (as further specified) and consulting, design and software development services (as further specified). Complainant is also the holder of a service mark registration for the stylized term "INFOSPACE" on the Principal Register at the USPTO, Reg. No. 2,384,606, dated September 12, 2000, in International Class 35, covering computer services, namely providing on-line directory services (as further specified). (Complaint, paragraph 12 and Annexes D-F). These registrations are valid and subsisting.
Complainant has used the "INFOSPACE" mark in commerce since at least December 16, 1997, based on the earliest of the dates of registration of that mark, and without prejudice to whether Complainant may hold earlier-arising rights in the mark.
Complainant has additionally applied for registration for the "INFOSPACE" mark, both standing alone and in combination with other terms (i.e., "POWERED BY INFOSPACE"), in the United States and the European Union (Complaint, Annexes H-K).
Complainant has registered the domain name "" and operates a website with the Internet address "www.". The record of such registration was created on May 28, 1996, (id., paragraph 12 and Annex L).
Complainant�s service mark and domain name are well known among Internet users, with Complainant�s website receiving a high volume of Internet traffic (id., paragraph 12).
According to the registrar�s verification response to WIPO, dated November 9, 2000, "Lemieux, Michael" is the listed registrant of the domain name "". According to a Network Solutions� WHOIS database record furnished by the Complainant, the record for the disputed domain name was created on March 3, 2000 and was last updated on March 3, 2000 (Complaint, Annex A).
As of October 24, 2000, the disputed domain name was redirected to a website with Internet address "". This website home page was identified as "SportsI". This website offers for sale tickets to Seattle Mariners baseball games, and includes internal linked pages showing dates on which seats are available and a seating chart of the baseball stadium. Four seats for each game are indicated as generally being offered for sale, at a price of $120 for four tickets (according to Respondent, reflecting face value of the tickets), plus shipping (Complaint, Annex N, and Panel visit to site of January 17, 2001).
Respondent has used the Internet address "" in newspaper advertising ("Mariners Season Ticket Exchange") and on a free listing website ("CitySeats") to direct potential customers to Respondent�s "SportsI" website (Response).
On April 6, 2000 and May 5, 2000, Complainant (through its counsel) sent via Federal Express to Respondent a cease and desist and transfer demand with respect to the disputed domain names (Complaint, Annexes O & P). Respondent did not reply to such correspondence (id, paragraph 12).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions� dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant states that it is the holder of valid service mark registrations for the term "INFOSPACE" and has used that mark in commerce since at least May 28, 1996 (see Factual Background, supra).
Complainant states that its mark and services are famous among users of the Internet based, inter alia, on the high volume of traffic at its website.
Complainant alleges that the disputed domain is confusingly similar to its service mark since it adds only the prefix "sports" to the mark, and it suggests an affiliation with Complainant. Complainant alleges that since it provides information about tickets to events (including sporting events) on its website, Internet users familiar with its well known mark are likely to assume that Respondent�s business is an extension of its own.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name since Respondent is not affiliated with Complainant and has not been authorized to use its service mark. Complainant alleges that Respondent has not been commonly known by the disputed domain name, and notes that Respondent�s web page is not identified by "", but rather is identified with the "SportsI" name.
Complainant states that Respondent has registered and is using the disputed domain name in bad faith. Complainant indicates that Respondent is deliberately using the disputed domain name to divert Internet users to its website by creating confusion as to its sponsorship by or affiliation with Complainant, and that since Complainant has no control over the content of Respondent�s website, it will suffer damage from Respondent�s use of its name.
Complainant requests that the Panel direct the registrar to transfer the disputed domain name to it.
B. Respondent
Respondent states that "" is not confusingly similar to "" because "[t]he salient feature of �sportsinfospace.� is �sports�". There is no "sportsinfospace", according to Respondent, on Complainant�s website. Also, a web search for "�sports news�" or "�sports ticket�" does not readily yield a proprietary "infospace" website.
Respondent claims that he has used the disputed domain name solely to advertise his personal excess Seattle Mariners Baseball season tickets (see Factual Record supra).
Respondent indicates that he is not engaged in bad faith use of the disputed domain name since his website venture is not "�commercial�" in that he does not make a profit on his sales of tickets. The "" web address resolves to "", "a subdomain of [his] company web presence".
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 1) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond
(see, e.g., paragraph 2(a), Rules).
In this proceeding, Respondent has furnished a response to the complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant is the holder of service mark registrations for the term "INFOSPACE" in the United States and is using that mark in commerce (see Factual Background, supra). Complainant�s registration of the "INFOSPACE" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law. (Footnote 2) The Panel determines that Complainant has rights in the service mark "INFOSPACE". Based on the December 16, 1997, date of the earliest registration submitted in this proceeding, and without prejudice to whether Complainant may hold earlier-arising rights in the mark, the Panel determines that Complainant�s rights in the "INFOSPACE" mark arose prior to Respondent�s registration, on February 25, 2000, of the disputed domain names.
Complainant�s "INFOSPACE" mark is well known to users of the Internet as identifying the source of directory and other services.
Respondent has registered the domain name "". This domain name (1) incorporates Complainant�s "INFOSPACE" service mark, (2) adds the generic top-level domain (gTLD) ".com", and (3) adds the prefix "sports" to Complainant�s mark.
The addition of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain name to "INFOSPACE" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 3)
Respondent does not, by adding the descriptive term "sports" before "infospace", create a new or different mark in which he has rights or legitimate interests, nor does he alter the underlying mark held by Complainant. Complainant�s mark is well known among Internet users and identifies Complainant as a source of information and services. The term "sports" is one that users of the Internet would expect to be used by Complainant in connection with its mark. This term, when combined with Complainant�s mark, creates a domain name that Internet users are likely to assume is associated with Complainant as a source of services on the Internet. The disputed domain name "" is confusingly similar to Complainant�s mark within the meaning of paragraph 4(a)(i) of the Policy.
Complainant has met the burden of proving that Respondent is the registrant of a domain name that is confusingly similar to a service mark in which Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
The second element of a claim of abusive domain name registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, paragraph 4(c))
Before receiving a cease and desist and transfer demand from Complainant, Respondent made use of the disputed domain name to advertise for sale, and to direct Internet users to a site offering for sale, tickets to Seattle Mariners baseball games. Although registration of a service mark on the Principal Register at the USPTO provides constructive notice of ownership of the mark, the Panel does not equate this with notice of a dispute since to do so would largely eliminate the potential basis for establishing rights or legitimate interests under paragraph 4(c)(i) of the Policy. The main question under paragraph 4(c)(i) is whether Respondent�s offer of goods or services was bona fide, that is, made in good faith.
In the particular circumstances of this case, in which Respondent has used the "" domain name solely for the purpose of offering for sale his own season tickets to baseball games, the Panel is satisfied that he has not attempted to take advantage of the service mark rights of Complainant by misleadingly diverting users of the Internet to his website by creating confusion as to the source or sponsorship of his website. The Panel is satisfied that Respondent has a legitimate interest in the disputed domain name. The Panel notes that this interest is predicated on Respondent�s tightly restricted use of the name. If Respondent had used the name to promote a business enterprise that sought to take advantage of Complainant�s rights in its service mark, the defense of good faith use of the name to offer goods or services would not apply.
Moreover, the Panel does not find that Respondent acted in bad faith. He has not offered the disputed domain name for sale, he has not prevented Complainant from registering its service mark as a domain name, and he has not attempted to interfere with Complainant�s business (see Policy, paragraph 4(b) (i)-(iii)). Under paragraph 4(b)(iv), a finding of bad faith may be based on evidence that a respondent "by using the domain name, � [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of [respondent�s] web site or location of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)). In this case, Respondent appears to legitimately have offered for sale his surplus baseball tickets (four seats) for the face value of the tickets. The Panel does not consider this to constitute an attempt to capitalize on Complainant�s mark for the purpose of commercial gain. Again, his use was tightly limited to the sale of his own tickets at face value.
Based on its findings that Respondent has demonstrated a legitimate interest in the disputed domain name, and the Respondent has not acted in bad faith, the Panel determines that Complainant has not established the elements necessary for finding that Respondent has engaged in abusive domain name registration within the meaning of paragraph 4(a) of the Policy.
7. Decision
Based on its finding that Complainant, InfoSpace, Inc., has not established that Respondent, Michael Lemieux, has no rights or legitimate interests in the disputed domain name, "", and that Complainant has not established that Respondent acted in bad faith, the Panel finds that Respondent has not engaged in abusive domain name registration. The Panel rejects Complainant�s request to direct the registrar to transfer the disputed domain name to it.
Frederick M. Abbott
Sole Panelist
Dated: January 18, 2001
Footnotes:
1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
2. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).
3. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). For purposes of its decision, the Panel need not address whether ".com" may be capable of acquiring secondary meaning in another context.
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