WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Q, Inc. v. Neal J. Solomon
Case No. D2002-0523
1. The Parties
The Complainant in this administrative proceeding is Q, Inc., a corporation organized under the laws of the state of Delaware and having its principal place of business at 8205 South Cass Avenue, Suite 102, Darien, Illinois 60561, United States of America.
Respondent in this proceeding is Neal J. Solomon, an individual whose address is P.O. Box 1224, Gloversville, New York 12078, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is .
The registrar for the disputed domain name is A, 1800 Sutter Street, Suite 100, Concord, California 94520, United States of America.
3. Procedural History
The resolution of this administrative proceeding will be governed by the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on June 5, 2002, by e-mail, and on June 10, 2002, in hard copy. On June 7, 2002, the Center sent a Request of Registrar Verification to the registrar of the domain names and pursuant to which the Center received a verification on June 12, 2002. However, the Complainant�s allegation that the Respondent was also the Registrant of the domain name turned out not to be true.
Following several e-mail communications between the Center and both Complainant and Respondent, an Amended Complaint contesting only was filed on June 25, 2002, by e-mail, and on July 1, 2002, in hard copy.
On July 2, 2002, the Center forwarded a copy of the Amended Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.
On July 12, 2002, the Center extended by 10 days the deadline by which Respondent was required to file a Response, i.e., until August 1, 2002 (per Rule 5(d)). On the July 11, 2002, the Respondent stated he had returned from vacation after the 20 day response period had already begun to run. On July 31, 2002, the Center received the Response by e-mail and on August 7, 2002, in hard copy.
The Panel submitted a Declaration of Impartiality and Independence on August 12, 2002, and the Center proceeded to appoint the Panel on that same day. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
4. Factual Background
Complainant, an American company, is in the business of supplying consumers with competitive insurance prices. Much of this service is provided using Complainant's registered domain name, . To protect its rights, Complainant has registered trademarks for the names "Quotesmith" and "Q" in the United States (collectively, the "Complainant Trademark").
Respondent is listed as the Registrant of the disputed domain name, . The record of registration was created on September 18, 2001. As of the filing date of this Complaint, Respondent had made no use of that domain name.
Subsequent to Respondent's registration of the disputed domain name and at Complainant's initiation, Complainant and Respondent participated in a back-and-forth e-mail discussion regarding Complainant's desire to obtain Respondent's rights in the name for registration and transfer costs. That discussion proved unfruitful and ended with Respondent's e-mail to Complainant, dated January 24, 2002. In that message, among other things, Respondent alluded to his belief in the strength of his position should there be a hearing concerning the disputed domain name, the unnecessary hostility in Complainant's approach, the unacceptability of a transfer without compensation and his ability to possibly assist Complainant in the acquisition of another domain name ().
5. The Parties� Contentions (Summarized)
Complainant�s Contentions
-- Operating since 1984, Complainant is an internet-based insurance price comparison service which assists consumers in obtaining instant insurance quotes from over three hundred leading insurance companies -- the largest and most comprehensive insurance price comparison service in America.
-- Complainant has United States registered trademarks in the names "Quotesmith" and "Q". In use before Respondent's registration of the disputed domain name, "Quotesmith" is a strong mark by virtue of its distinctiveness and its long and exclusive use by Complainant.
-- In 1996 Complainant registered the domain name , through which it provides its services.
-- Respondent�s domain name is identical or confusingly similar to the Complainant Trademark. Consumers will be confused and will conclude that a relationship of some sort exists between the Complainant and the Respondent, although no such relationship actually exists.
-- Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has not used and is not currently using, nor has Respondent made any demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name resolves to , a domain name registration service.
-- Respondent registered and is using the disputed domain name in bad faith. By his own words, Respondent has no intent to make commercial use of the disputed domain name.
-- At Complainant's initiation, Complainant and Respondent engaged in a prolonged exchange of e-mail messages relative to Complainant's desire to acquire the disputed domain name. There was no satisfactory resolution because in the end, as noted in Respondent�s e-mail message of January 24, 2002, Respondent wanted a "bounty" in excess of his registration and transfer costs.
-- As a further indication of bad faith, Respondent offered to assist Complainant in acquiring the domain name, , which Respondent does not own, if Complainant and Respondent could quickly reach an agreement for the transfer of the disputed domain name. As Respondent put it: "It appears that the possibility exists for you to obtain both of the URL's that you keep telling me you so desire. For this to happen we would need to come to terms quickly."
Respondent�s Contentions
-- The Policy is designed to prevent clear cases of "cybersquatting", which is not present in this case.
-- Respondent is a highly respected professional and maintains a spotless record while undergoing continual review by monitors of his ethical conduct.
-- The disputed domain name is not identical or confusingly similar to a trade or service mark in which Complainant has rights. "Quotesmith" is a generic word used extensively by speakers and writers to convey the process of selecting appropriate quotations or to prepare sections of speeches and texts for selection as quotations. Thus, Complainant holds no exclusive rights to that word.
-- Respondent has not registered the disputed domain name in order to obtain internet traffic from Complainant or to profit from any confusion.
-- The burden of proof is clearly upon Complainant to establish that Respondent has no rights or legitimate interests in the disputed domain name.
-- Respondent does have rights and legitimate interests in the disputed domain name. Respondent's intended use of the domain name in question will be non-commercial and will offer internet users free of any charge a selection of literary quotations, quotations from speeches and other similar quotations of things that people say and write. Furthermore, Respondent is known as a "Quotesmith."
-- Respondent did not register and use the disputed domain name in bad faith. During a succession of e-mails between the parties, Respondent never suggested any price -- let alone one above his direct registration costs -- for the disputed domain name. Respondent did offer to put a disclaimer on his proposed web site, free of charge to Complainant, disavowing any connection with Complainant.
-- Due to numerous delays, some caused by the Complainant, no web site addressed at the disputed domain name has yet become ready for public display.
-- Someone offered to sell the domain name, , to Respondent. Respondent simply tried to build goodwill with the Complainant by offering to introduce the Complainant to that third party.
6. Discussion and Findings
In accordance with the Policy (� 4(a)(i) through � 4(a)(iii)), Complainant may prevail and be transferred the disputed domain name, , if Complainant can prove the following:
-- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
-- Respondent has no rights or legitimate interests in respect of the disputed domain name; and
-- the disputed domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The record demonstrates that Complainant owns United States registrations of the trademarks "Quotesmith" (No. 2307284, dated January 11, 2000) and "Q" (No. 2352094, dated May 23, 2000) (see Annex 7 to the Amended Complaint). Complainant's rights in the Complainant Trademark, registered early in 2000, pre-date Respondent's registration of the disputed domain name in September, 2001.
The disputed domain name, , varies from the Complainant Trademark only in the inclusion of the ending gTLD. Panels ruling under the Policy have found consistently that this difference is not a material consideration when determining if a trade or service mark is identical or confusingly similar to a disputed domain name. See for example Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA95856 (December 18, 2000); and AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002).
Thus, in line with the reasoning above, the Panel concludes that the disputed domain name is identical to the mark in which Complainant has rights.
No Rights or Legitimate Interests
In his Response, Respondent takes great pains to emphasize that Complainant bears the burden of proving that Respondent has no rights or legitimate interests in the disputed domain name. However, the Panel notes the general difficulty in proving a negative. That is why the Panel prefers to consider the entire record presented to it on this issue, an approach which the Panel finds well within the mainstream of opinions rendered under the Policy . See Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628 (August 11, 2000) ("Whilst the overall onus of proof rests on a Complainant, nevertheless failure by a Respondent to demonstrate that he comes within paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof").
Respondent does contend that, even if he has acquired no trademark or service mark rights in the disputed domain name, he has been commonly known by that name (� 4(c)(ii) of the Policy). His evidence to that effect consists primarily of sworn affidavits from his wife, employees and business associates verifying the duration and extent of his activities related to utilizing quotations in his correspondence (Exhibits 1 through 8 of the Response). Even if the Panel ignores the likelihood of bias toward Respondent inherent in the source of these affidavits, they merely attest to a characteristic of Respondent and not that he is commonly known by a particular name. The Panel takes note that many people probably are wont to use quotations in their writings without being actually known by the name "Quotesmith"; as many tall, fat or bald people are not explicitly known by the names, "Tall", "Fat" or "Bald". The Respondent produces no independent authority that people who frequently use quotations are known as "quotesmiths." The term "wordsmith" is well established, but that "quotesmith" could be used as the Respondent alleges, while rational, does not seem to have anything like the currency Respondent implies.
Respondent claims also that before any notice to him of the dispute, he engaged in demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services (� 4(c)(i) of the Policy). Respondent asserts that he was preparing to use the domain name to create a web site that offers internet users free of any charge a large selection of various literary and verbal quotations. To support this assertion, Respondent points the Panel to a number of meetings and discussions he has had about the development of the web site (Exhibits 1 through 8 of the Response). However, most of the meetings that are alleged by Respondent to directly involve the disputed domain name occurred in April, 2002, months after his first contact with Complainant.
The remaining preparations amount to "discussions" with his wife (dates unknown), his employees (dates unknown) and one business associate in October, 2001. From this evidence, the Panel cannot verify the amount of time involved in these "discussions." Also, there is no contention by Respondent that he has spent money or any other resource, but time, in the development of the web site. As such, the Panel cannot conclude that Respondent's activities relative to the disputed domain name constitute "demonstrable preparations" to use that name prior to being informed by Complainant of this dispute.
Also, the Panel notes that although the Respondent at several points in the Response (e.g. at para 11) contends his planned quotation web site would have been free, some of his key colleagues speak of their conversations with him as discussions of a "business proposition". For example, in Respondent Exhibit 4, an affidavidit of the Respondent�s superviser, we find: "More recently (during late 2001 and during April of 2002) he (Respondent) has discussed with me Quotesmith info. We have discussed plans at considerable length for business uses of the internet with his domain name Q." Thus, the Respondent is not entitled to the fair, noncommercial use safe haven of the Policy at para 4(c)(iii).
In analyzing all of the evidence submitted to it, the Panel finds that Complainant has sustained its burden in demonstrating that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Bad Faith
Complainant asserts that Respondent's admission that he intended to make no commercial use of the disputed domain name is prima facie evidence of bad faith. The Panel must disagree because, as Respondent points out, the Policy provides for non-commercial use of domain names at para 4(c)(iii).
However, in � 4(b), the Policy does list four specific circumstances which the Panel may take as evidence of bad faith and use. Particularly, � 4(b)(i) provides for a finding of bad faith if "[Respondent has] registered�the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [Complainant]�for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name."
Respondent claims that he consistently told Complainant that the disputed domain name was not for sale and did not offer to sell or set a price in connection with it. However, previous Policy panels have noted the increasing sophistication of domain name registrants with respect to the evidence of bad faith. See Marrow v. iceT.com, WIPO Case No. D2000-1234 (November 22, 2000) ("Since it has become commonly known that an approach to a trade mark owner to sell a domain name containing its trade mark will be taken as evidence of bad faith, it is becoming increasingly common for registrants of domain names containing trademarks to sit and wait for an approach from the trade mark owner.").
Respondent is well within the class of such knowing registrants as evidenced in the Response where, among other things, Respondent: (i) refers to his January 24, 2002, e-mail assertion to Complainant that, "I believe that I have a strong case that can be presented to an arbitrator in an ICAAN UDRP hearing should you elect to bring one;" (ii) notes that he has had a decade-long contact with a consulting firm to "maintain his computer network and associated infrastructure;" and (iii) emphasizes that the same consulting firm "has installed sophisticated network, firewall, server, and mailserver technologies for his business."
Through prior e-mail messages, Complainant had already offered a reasonable price related to Respondent's registration costs for transfer of the disputed domain name. In light of his relative sophistication in these matters and although not explicitly demanding or setting a price, Respondent's January 24, 2002, e-mail response that "�an outright transfer without compensation is out of the question" appears to the Panel as a clear counter-offer for a sum in excess of those costs.
However, what cements the Panel belief that Respondent has acted in bad faith is his offer later in the same e-mail. Respondent says, "On another issue, although I do not own the "" URL, if we were to immediately come to terms regarding settling this dispute in a mutually acceptable manner, there is a possibility that I may be able to assist you in obtaining that URL as well. Any opportunity I have regarding this is fleeting. It appears that the possibility exists for you to obtain both of the URL's that you keep telling me you so desire. For this to happen we would need to come to terms quickly."
Respondent would have the Panel believe that his offer to assist Complainant in acquiring another similar domain name is a gesture of goodwill. On the contrary, the Panel thinks it rather odd that Respondent would engage in goodwill gestures after earlier in the e-mail referring to Complainant's "unnecessary hostility" and presenting Complainant with an ultimatum about compensation. The Panel believes a fair reading of the last part of that e-mail is that Respondent is more than willing to sell the disputed domain name and in fact is pressuring Complainant to pay a sufficiently high price to acquire not only the disputed domain name, but another similar one as well. After many coy e-mails, Respondent finally came clean on his true intentions.
The Panel�s conclusion is reinforced by the fact that Respondent�s profession as a certified financial planner almost certainly caused the Respondent as a matter of course to be familiar with the Complainant�s insurance quotation business and the Complainant�s rights in the disputed domain name. In this context, the Respondent�s bad faith is patent and irreparable from the outset.
Therefore, the Panel concludes that, per � 4(b)(i) of the Policy, the disputed domain name was registered and is being use in bad faith.
7. Decision
The Panel has found that the disputed domain name, , is confusingly similar to Complainant�s "Quotesmith" trade and service marks. The Panel has also concluded that Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds Respondent registered and is using the disputed domain name in bad faith because Respondent's primary intent in registration was to transfer the disputed domain name to Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name.
Per � 4(i) of the Policy and Rule15, the Panel orders that the disputed domain name, , be transferred from the Respondent, Neal J. Solomon, to the Complainant, Q, Inc.
Dennis A. Foster
Sole Panelist
Dated: August 27, 2002
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