WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intellution, Inc. v. Intellution - You should have bought it when you had the chance
Case No. D2002-0914
1. The Parties
The Complainant is Intellution, Inc., C/O Harry Merkin, Vice President, Global Marketing Communications, and Strategic Alliances, Foxborough, MA 02035, United States of America, represented by Wolf, Greenfield & Sacks, P.C. of United States of America.
The Respondent is Intellution - You should have bought it when you had the chance, Tarpon Springs, FL 34689, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with R, of New York 10018, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2002. On October 4, 2002, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On October 4, 2002, the Center received a verification showing that the domain name was registered through R, Inc. and that an individual, David Maughan, was listed as the current Registrant.
On October 8, 2002, the Center sent the Complainant a Complaint Notification of Deficiency due to the failure to name Mr. Maughan as the true registrant of the disputed domain name. Also on October 8, 2002, an amendment to the Complainant was filed correcting the deficiency.
On October 11, 2002, a "Notification of Complaint and Commencement of Administrative Proceeding" and a copy of the Complaint was sent to the Respondent, Mr. Maughan at the address provided in the domain name registration via regular mail and to the email address provided for that purpose. Copies of the Notification and Complaint were also sent to ICANN, the Registrar and the Complainant. The Center did not receive error messages or notices of non-delivery when the Notification and the Complaint were sent to the appropriate e-mail address and postal address listed in the registration for the Respondent. On November 1, 2002, a Notification of Respondent Default was sent out.
On November 8, 2002, the case was referred to the panelist. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a manufacturer of industrial automation software. According to the declaration of Harry Merkin, Vice President for Global Marketing Communications and Strategical Alliances at Intellution, Inc., Intellution's products enable companies to control operations on the plant floor and to distribute information about those operations to all levels of an enterprise. The Complainant was established in 1980, and has operated continuously under the name "Intellution" since 1984. It has continuously sold its software and related services under the INTELLUTION mark. Intellution has invested tens of millions of dollars in sales under and in conjunction with the INTELLUTION mark, and it has the following United States Federal Registrations: 1,765,605; 1,333,813; and 1,333,797.
Based on the sworn testimony of Mr. Merkin, the efforts of Complainant have resulted in the Complainant having established secondary meaning in the INTELLUTION mark.
Intellution�s chief competitor is a company called Wonderware. The domain name in this case, , has been registered by the Respondent, apparently without Wonderware�s knowledge, and the domain name was then caused to resolve to Wonderware�s web site. The Respondent provided a fictitious name in his registration information, calling himself "INTELLUTION-YOU SHOULD HAVE BOUGHT IT WHEN YOU HAD THE CHANCE." The telephone number listed is the directory assistance number for the 727 area code.
5. Parties� Contentions
A. Complainant
1. The domain name is identical to the Complainant�s trademark.
2. The Respondent has no right or legitimate interest in respect of the domain name.
3. The domain name is registered and is being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Since the Respondent has not submitted a response, the panelist must decide whether a default should be entered, or whether the Complainant�s submissions should be reviewed. There does not appear to be a statement in the various rules or contract governing this proceeding that would put a Respondent on notice that the failure to respond would remove any burden of proof from the Complainant. At least one previous panelist has addressed the issue and felt that the essential elements of the claim should be reviewed to confirm that they have been met. RRI Financial, Inc, V. Ray Chen, WIPO Case No. D2001-1242 (December 11, 2001). The current panelist agrees that such a course is appropriate.
In order to prevail, therefore, the Complainant must prove the following:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Uniform Domain Name Dispute Resolution Policy, paragraph 4(a).
The Policy illustrates three "safe harbors" for the Respondent. They all relate to the Respondent�s bona fide offering of goods and services, if any, rights of the Respondent in the domain name, and/or non-commercial, "fair use" of the domain name without intent for commercial gain. In this case, none apply.
The Complainant�s United States federal registrations, coupled with the declaration of Mr. Merkin, demonstrate that the Complainant has rights in the mark INTELLUTION. The domain name fully appropriates the trademark. Therefore, the domain name is identical to a trademark to which the Complainant has rights, and the Complainant has met the first element of proof.
The name the Respondent included in the domain name registration, coupled with the lack of accurate contact information and the failure of the Respondent to show any interest in the domain name, demonstrate that the Respondent has no right or legitimate interest in respect of the domain name. The Complainant has, therefore, demonstrated the second element of proof.
As to whether the Respondent registered the domain name and used it in bad faith, the Policy sets forth four, non-exclusive factors to be considered. The first two relate to a registrant who is attempting to sell the domain name or has engaged in a pattern of conduct to prevent the trademark owner from reflecting the mark in a corresponding domain name. Neither is present in this case.
Also, there is no evidence to suggest that the Registrant is in the business of selling domain names or has engaged in a pattern of the conduct surrounding the present dispute. However, one factor regarding bad faith is present: the registrant has registered the domain name primary for the purpose of disrupting the business of a competitor. That is evident from the fictitious name supplied to the WHOIS database that includes the phrase "you should have bought it when you had the chance;" it is also illustrated by the directing of the domain name to a competitor�s website.
Bad faith having being demonstrated conclusively under this factor of the Policy, the remaining considerations the Complainant expressed regarding bad faith will not be addressed.
7. Decision
For the forgoing reasons, the panelist decides:
(a) That the domain name registered by the Respondent is identical to a trademark in which the Complainant has rights.
(b) The Respondent has no right or legitimate interest in respect of the domain name.
(c) The domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the panelist requires that the registration of the domain name be transferred to the Complainant.
Gordon Arnold
Sole Panelist
Dated: November 22, 2002
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