WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RE Infolink v. Nathan Frey d/b/a 123 Mail
Case No. D2000-1687
1. The Parties
The Complainant is RE Infolink, a California corporation, doing business at 300 Orchard Drive, Campbell, California, USA.
The Respondent is Nathan Frey d/b/a 123 Mail, doing business at 1647 Roberta Drive, San Mateo, California, USA.
2. The Domain Name and Registrar
The domain name at issue is (the Domain Name). The registrar with which the Domain Name is registered is Network Solutions, Inc. (the Registrar or NSI), located in Herndon, Virginia, USA.
The Registrar provided the following contact details for the Respondent (also the Administrative and Billing Contact), Nathan Frey, 123 Mail, 1647 Roberta Drive, San Matao [sic], CA 94403, USA.
Technical Contact is Hostmaster, 9NETAVE, 1 Meadowlands Pkwy, Secaucus, NJ 07094. USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received the Complainant�s Complaint by e-mail on December 5, 2000 and in hardcopy on December 7, 2000. On December 6, 2000, the Center sent the Complainant an Acknowledgment of Receipt of the Complaint.
On December 7, 2000, the Center sent to the Registrar, NSI, a Request for Registrar Verification. On December 11, 2000, the Registrar transmitted to the Center, via e-mail, a Registrar Verification Response confirming that the Domain Name is registered with NSI and that the Respondent is the current registrant of the Domain Name.
The Center completed a Formalities Compliance Review on December 12, 2000, and verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the WIPO Supplemental Rules). Complainant made the required payment to the Center. Upon independent review, the Administrative Panel also finds that the Complaint satisfies the formal requirements of the Policy, the Rules, and the Supplemental Rules.
On December 12, 2000, the Center transmitted to the parties, with copies to NSI and ICANN, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of December 31, 2000 by which the Respondent could file a Response to the Complaint. This Notification was sent to the Respondent.
On December 30, 2000, the Center received Respondent�s Response to the Complaint by e-mail; the same was received on January 8, 2001 in hard copy. The Center notified the parties that it would proceed to appoint the Administrative Panel.
In view of the Complainant�s selection of a three-person Panel, the Center invited
Sally M. Abel, Carol Anne Been and Dana Haviland to serve as Panelists, with
Ms. Haviland serving as Presiding Panelist. On February 20, 2001, after having received the Panelists� Statements of Acceptance and Declarations of Impartiality and Independence, the Center transmitted to the parties via e-mail a Notification of Appointment of Administrative Panel and Projected Decision Date. The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the WIPO Supplemental Rules.
4. Factual Background
Complainant RE Infolink (Complainant) is a California corporation with its principal place of business in Campbell, California. Complaint Annex 4, Ex. G. Complainant is engaged in "computer real estate database services" and "maintains a multiple listing service which contains information on all property for sale...as well as rental property, that its members enter into its computerized database," in five California counties: Santa Clara, San Mateo, Santa Cruz, Monterey and San Benito. Complaint para. 12(A-B). Complainant�s computerized real property database is made available to participating or subscribing brokers and agents who pay a fee for their participation in the multiple listing service and access to RE Infolink�s database. Id. Complainant has operated a web site at since 1998. Id.
On February 11, 1994, Complainant filed an amendment to its articles of incorporation with the California Secretary of State to change its corporate name from Regional MLS Corporation to RE Infolink. Complaint, Annex 4, Exhibit A. Complainant claims state common law trade name rights by virtue of this amendment.
On January 26, 1996, Complainant filed an application for a federal trademark and service mark registration, on an intent to use basis, for "computer services ... in the field of multiple real estate listing for use by desktop users in network communications" and related software. Complaint, Annex F. A Notice of Allowance was issued February 15, 2000, but as of the date of this ICANN proceeding, Complainant had not yet filed a Statement of Use. Complaint, para. 12(G).
According to the Response, Respondent decided to use the name for a new online business in spring 1997, did a domain name check and trademark search, and began preparing a business plan for an Internet based service for real estate agents and brokers in fall 1997. Response, p. 4.
On April 15, 1998, Respondent registered the Domain Name with Network Solutions. Response, p.4.
In April 1999, respondent "registered a business plan for reinfolink with Venture Capitalists, G ... an attempt to solicit funding." Response, p.4.
According to the Response, Respondent learned from a real estate broker customer in May 1999 that there was "an existing business name under the name of RE infolink," and he therefore sent them a "courtesy letter" in May 1999 advising of Respondent�s own Internet business venture. Response, p.4.
According to the Complaint, in the spring of 1999, Complainant received a letter from Respondent Frey, who identified himself as the "founder" of "" and stated that he planned "to use as the name and brand for my new internet startup." Complaint, Exhibit B. Respondent�s letter stated that he had been in the real estate business for five years "as the owner and founder of the free real estate publication The Real Estate Book of San Mateo County," but had sold that business and "moved on to explore internet real estate solutions." Id. He suggested that "since both our companies are in the real estate business, I value the though [sic] that in the future we could exchange services and establish a fruitful business relationship....And if your company feels that it could be, I would like to extend your company the possibility to purchase the online rights to ." Id.
On September 14, 1999, Complainant obtained a California state service mark registration for the mark RE Infolink for "computer services and software for use in ...multiple real estate listings, related real estate information, and computer database on the internet." Complaint, Annex 4, Exhibit G.
The parties exchanged correspondence throughout 1999 and 2000, including what appear to be negotiations between the parties for the purchase of various business assets by Complainant from Respondents, including CDs and software, as well as the Domain Name and other real estate related domain names, for $35,000 to $50,000. Complaint, Exhibits B-F, H.
During this period, Respondent changed the name of its business from to H. Response, p. 4. HomeInfoLink, a California corporation incorporated in January 2000, has operated a web site at www.h since June 1999 and "provides various services to real estate agents and brokers, including real estate content, Internet dial-up access and email." Response, pp.3-4.
According to the Complaint, the web page associated with the Domain Name has changed over time. On August 2, 2000, the Domain Name web page stated that "This domain name is not associated with RE Infolink, a Northern California Real Estate Company. This domain is now available for sale. Start an online real estate information link service website with reinfolink?com! Please contact nathan@h for further information." Complaint Annex 6. On October 27, 2000, the Domain Name web page was blank except for the term . Complaint, para. 12( Z). On November 6, 2000, the Domain Name web page contained the heading "a" and the phrase "For more information on this domain name, please contact: nathan@h." Complaint, Annex 7. On November 30, 2000, the Domain Name web page bore the heading "Relationship Erotica Information Link" and the phrases "Add Some SPICE to your Relationship!" and "COMING SOON � PLEASE COME BACK!" Complaint, Annex 8.
This ICANN proceeding was commenced in December 2000.
5. Parties� Contentions
A. Complainant
The Complainant contends that the Domain Name registered by the Respondent is identical to Complainant�s mark RE Infolink, in which Complainant claims federal, state and common law trademark and trade name rights.
Complainant contends that the Respondent has no rights or legitimate interests in the Domain Name. Complainant argues that in the Spring 1999 letter from Respondent Frey, Frey stated that he intended to use the Domain Name "as the name and brand" for his new "internet start up, " indicating that Respondents had not yet used the Domain Name and therefore had no right or legitimate interest in it. Complaint para. 12(K), Annex 4, Ex. B.
Complainant further contends that the Respondent has registered and is using the Domain Name in bad faith. Complainant alleges that because Respondent had been in the real estate business for five years in a county in which Complainant did business, Respondent was "obviously aware" of the existence of Complainant RE Infolink�s business. Complaint para. 12(M). Complainant further argues that the Respondent�s actions unmistakably indicated that he intended to profit from either public confusion regarding the source or sponsorship of the Domain Name or from the sale of the Domain Name to Complainant or others. Id.
As evidence of bad faith, Complainant refers to the undated letter from Respondent attached as Exhibit B to Annex 4 of the Complaint wherein Respondent "offered to "extend [Complainant] the possibility to purchase the online rights to ." Next, Complainant alleges that the Respondent, in a letter dated June 13, 1999, recognized the potential confusion that would be caused by Respondent�s use of for its business and stated that it would go by another name. Complaint para. 12 (S-T), Annex 4, Exhibit F. Complainant contends that Respondent later offered to sell the Domain Name along with several CDs for $35,000, an amount in excess of Respondent�s out-of-pocket costs for the Domain Name. Complaint para. 12 (U). Finally, Complainant contends that bad faith use is evidenced by the opening web page of , which first offered the Domain Name for sale, later was blank, and subsequently bore the heading "Relationship Erotica Information Link." Complaint para. 12 (W-BB).
B. Respondent
Respondent asserts that the Domain Name is not identical to the Complainant�s mark, arguing that the Domain Name is different from Complainant�s name because it is one word instead of two, and could indicate a different business model. Respondent concedes the similarity of the Domain Name and the mark, however, and has acknowledged the potential for confusion in a June 1999 letter to Complainant. Respondent further contends that at the time the Domain Name was registered, the Complainant did not have registered trademark rights, and that the existence of any alleged California state common law rights did not prevent the use of the Domain Name in other states. Response, p.7.
Respondent also disputes Complainant�s claim that Respondent has no rights or legitimate interests in the name. Respondent contends that he did intend to use the Domain Name in commerce, expending "extensive monies and effort building a business plan" for that purpose. Response para. G. Respondent states that the fact he has developed an online real estate business, which is now incorporated in California, supports his contention of a legitimate interest in the Domain Name. Response para. H.
Finally, Respondent contests Complainant�s contention that he has registered and used the Domain Name in bad faith. According to Respondent, "While it is true that I was in the real estate business as a professional selling advertising for a publication catering to the real estate community, I was never a real estate agent or a broker and had never conducted any business with RE infolink and therefore had no specific reason to know who they were. It was only after purchasing the domain and talking about the intent on using the name for business with some real estate agents that I became fully aware of RE infolink�s existence, what service they provided, and in what state they were located in." Response, p.6. Respondent contends that Complainant�s services "are widely known as the MLS and Multiple Listing Services and not as �RE infolink services�," that Complainant "promotes its business "as MLSL" and that if Complainant "had truly intended to brand their services as Re infolink and to be known as such, they would have purchased the domain instead of in 1994." Response, p.6. Respondent further asserts that he did due diligence at the time of registration of the Domain Name, including a domain name check and trademark search which did not turn up the Complainant�s mark. Respondent further asserts that he has not used the Domain Name to solicit or confuse Complainant�s customers nor attempted to benefit or profit from Complainant�s name. Response, p.12.
Respondent also denies that he registered the Domain Name for the purpose of selling it. Response p.6. According to the Response, "If we truly had purchased the name solely to benefit from the sale of the domain name, we would not have spent considerable time, effort and resources to build an online business, which today is a California corporation." Response, p. 7. Instead, when Respondent became aware of the existence of Complainant�s business, he changed their business name and offered Complainant the opportunity to purchase the Domain Name to avoid confusion and as a gesture of good faith. Id. Respondent states that Complainant�s contention that Respondent offered to sell the Domain Name for $35,000 is incorrect and taken out of context, because the negotiations in question were for the sale of other business assets, including 10,000 CDs and software, and other real estate related domain names as well. Response, p. 8.
6. Discussion and Findings
Under the terms of the Policy, the Complainant must prove three distinct elements in order to prevail on a claim for transfer of a domain name. These elements are set forth in Paragraph 4(a) of the Policy:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
(a) Identity or confusing similarity of domain name and trademark
Although Complainant did not obtain any registered trademark rights until after the Respondent�s registration of the Domain Name, the Complainant may have had common law trademark or trade name rights to the mark RE infolink at the time of the Domain Name registration. Although WIPO is currently considering whether to expand the ICANN Policy to cover trade names, the Policy does not presently offer protection for trade name rights, and the Panel cannot determine whether Complainant had any common law trademark rights at the time of the registration of the Domain Name on the basis of the evidence submitted.
Complainant submits affidavits containing conclusory allegations that RE infolink has used the mark in its business since 1994, but submits no documentary evidence or specific allegations of actual use of the mark. Moreover, this contention is rebutted by the Complainant�s "intent to use" federal trademark application and its continuing failure to submit a Statement of Use within the last four years. Respondent contends that he was not "fully aware" (whatever that means) of Complainant�s existence because Complainant did business as MLS or Multiple Listing Services rather than as RE infolink.
In the Panel�s view, proof of the first element of Complainant�s claim would require the submission of additional evidence and more detailed direct and cross-examination of the various witnesses whose tesimony has been referred to in the pleadings. For this reason, the Panel believes that the claim is not appropriate for resolution in this summary ICANN proceeding and would be more appropriately resolved in judicial or arbitration proceedings designed for fuller development of the evidence.
(b) No legitimate interest in domain name
A party may demonstrate its rights or legitimate interest in a domain name under paragraph 4(c) of the Policy in any of the following ways:
(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.
Respondent has submitted some evidence of preparations to use the Domain Name in connection with a bona fide offering of goods and services, thus demonstrating a possible right or legitimate interest in the Domain Name under Paragraph 4(c)(i) of the Policy. Again, this evidence, as well as both parties� evidence as to Respondent�s actual notice of Complainant�s rights to the name, consists primarily of conclusory allegations unsupported by documentary evidence and untested by cross-examination. Thus, as to the second element of the claim, the Panel reiterates that resolution of the Complainant�s claim would be more appropriately dealt with in judicial or arbitral proceedings rather than this summary ICANN proceeding.
(c) Bad faith registration and use of the domain name
Paragraph 4(b) of the Policy sets forth four examples of bad faith, which are not exclusive, but which "shall be evidence of registration and use of a domain name in bad faith":
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your website or location.
Here again, Complainant has submitted some evidence of bad faith under Paragraphs 4(b)(i) and (iv) of the Policy, but bad faith registration and use are not sufficiently established on the evidence submitted and would require further submissions of proof. Respondent Frey denies being "fully aware" of the existence of the Complainant�s interest in the Domain Name prior to his registration of it, and Complainant has failed to put forth any concrete evidence showing that Respondent should have been aware of its use of the RE infolink name in its business. The simple allegation that Respondent must have known about Complainant�s business because he was involved in the real estate business is not sufficient to prove bad faith. However, the Panel is also troubled by Respondent�s assertion that he was not "fully aware," rather than a more emphatic assertion that he was not aware, of Complainant�s business prior to the registration of the Domain Name.
Likewise, the Panel does not find the evidence with respect to Respondent�s offers to sell the Domain Name determinative. According to Respondent, the initial offer to sell only came after he allegedly discovered that the Complainant had a potentially competing business. Thus, it is not clear that the primary purpose of registering the Domain Name was its sale. Moreover, the Panel is not satisfied that the documents submitted by the Complainant, which include purported correspondence between the Parties, establish a continuing effort to sell the Domain Name far in excess of the costs of its registration. Instead, the correspondence indicates that the Respondent offered to sell various business assets to the Complainant, of which the Domain Name was only one element.
Finally, the allegation that the Domain Name website currently bears the heading "Relationship Erotica Information Link" is insufficient in itself to establish bad faith registration and use.
Thus, proof of the third element of the claim is also subject to a need for additional evidentiary development and interpretation, as well as determination of issues of credibility, and the Panel thinks it inappropriate to make a finding as to bad faith registration and use on this record.
7. Decision
This case is not a typical cybersquatting case. The evidence submitted by the parties presents complex issues of fact and credibility as to each element of the claim which are not appropriate for resolution in this summary ICANN proceeding and would be better resolved in a judicial or arbitral proceeding designed for a fuller development and presentation of documentary and testimonial evidence. The Panel finds that on the basis of the evidence submitted, the Complainant has failed to carry its burden of proof as to each of the three elements of its claim, and the claim for transfer of the Domain Name is therefore denied.
Dana Haviland
Presiding Panelist
Sally M. Abel
Panelist
Carol Anne Been
Panelist
Dated March 26, 2001
Full & Egal Universal Law Academy