WIPO Domain Name Decision D2009-1244 for intellogy.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc. Case No. D2009-1244 1. The Parties

Complainant is Intellogy Solutions, LLC of Greensboro, North Carolina, United States of America, represented by Domingo J. Rivera, United States of America.

Respondents are Craig Schmidt and IntelliGolf, Inc., of Cameron Park, California, United States of America, appearing pro se. 2. The Domain Name and Registrar

The Disputed Domain Name is registered with eNom. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2009. On September 21, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed Domain Name. On September 21, 2009, eNom transmitted by email to the Center its verification response confirming that both Respondents are listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on October 20, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 9, 2009. The Response was filed with the Center on October 31, 2009.

The Center appointed David H. Bernstein as the sole panelist in this matter on November 4, 2009. 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. Pursuant to paragraph 10(c) of the Rules, the Panel extended the date for decision to November 25, 2009. 4. Factual Background

Complainant Intellogy Solutions, LLC1 is a computer service provider that hosts and maintains websites for clients on a computer server for a global computer network. Complainant is the owner of the registered trademark INTELLOGY. It applied for that mark before the United States Patent and Trademark Office (“USPTO”) on December 8, 2000; the mark was registered on October 16, 2001. Additionally, Complainant has registered the following domain names: , registered on November 21, 2000; , , and , all registered on April 1, 2002; and , registered on July 7, 2003.

Respondent Intelligolf, Inc. (“Intelligolf”), a sports-enhancing software products and technology company, is the identified registrant of , the Disputed Domain Name. Respondent Craig Schmidt (“Schmidt”) is the President/CEO of Intelligolf. The Disputed Domain Name is used by Respondents to promote and sell their sports-enhancing software. The Disputed Domain Name was initially registered by Karrier Communications, Inc. (“Karrier”) on February 6, 2000. The evidence suggests that Karrier transferred its rights in the Disputed Domain Name to Intelligolf sometime in 2008.2 Intelligolf and Karrier appear to be affiliated entities; the WhoIs information for the original Karrier registration and the current Intelligolf registration both list Craig Schmidt (the President/CEO of both entities) as the Registrant Contact and Administrative Contact. Karrier and Intelligolf also share the same address and telephone number in the respective WhoIs listings.

This proceeding follows correspondence between the parties. Respondents' submissions, at Annex 15, include email correspondence dated November 21, 2005, from Robert Rhodes, an owner of Intellogy Solutions, to Craig Schmidt. In his email, Rhodes stated that Complainant had owned a federal registration for the trademark INTELLOGY since October 2001, and owned the domain names , , , , and . Rhodes also stated: “We're not actively using any of those domains for commerce, but I would like to round out our ownership of the domains to help strengthen our Trademark position.” Accordingly, Rhodes concluded by asking Schmidt whether he would be willing to sell the domain name, since Rhodes' attorney has noted that Schmidt was “not using for any viable trademarked usage.”

In reply to Rhodes' email, Jim Simpkins, a colleague of Schmidt, cited Karrier's historic use of the Disputed Domain Name, that Karrier's Board of Directors “would not be willing to sell the Domain Name,” and that Karrier may wish to seek to invalidate Rhodes' other domain name registrations that incorporate the word “intellogy,” based on Karrier's prior use of “Intellogy” in a domain name (Response Annex 19). Simpkins noted that Rhodes explicitly stated in his earlier email, that none of the registered domain names were being used in commerce, and ended by asking Rhodes how he proposed to mitigate the situation.

Further correspondence between the parties followed in 2009. On January 27, 2009, Complainant's counsel, Domingo J. Rivera, sent Respondents a letter regarding their alleged infringement of Complainant's INTELLOGY mark, and demanded transfer of the Disputed Domain Name from Respondents to Complainant (Complaint Annex 13). In Respondents' February 2, 2009 reply, Respondents explained Intelligolf's June 1, 2007 acquisition of Karrier's domain names and other assets, and alleged that the February 6, 2000 initial registration of the Disputed Domain Name significantly predated Complainant's first use of the INTELLOGY mark in commerce. Respondents' letter also asserted that “there was no way that Karrier Communications would have known about the existence or intentions of [Complainant] prior to acquiring the domain name,” and stated that Respondents' use of the Disputed Domain Name would have been a matter of public record by the time Complainant registered the INTELLOGY trademark in October 2001. In their letter, Respondents also refuted the likelihood of consumer confusion, and offered to consider a settlement proposal from Complainant, if received prior to February 17, 2009.

In an additional reply directly to Complainant, by handwritten note dated February 2, 2009, Respondents stated: “If you would like to resolve this matter personally, and potentially save yourself tens of thousands of dollars in legal fees, you are welcome to contact me directly with your proposal by February 17, 2009.” 5. Parties' Contentions A. Complainant Trademark Registration and Use by Complainant

Complainant alleges that it has rights in the INTELLOGY trademark by virtue of United States (“U.S.”) Registration Number 2,498,402. Complainant states that it subsequently filed a Section 8 and 15 Affidavit of Use and Incontestability, which was acknowledged by the USPTO on November 7, 2007.

Complainant alleges that it has used its mark in connection with the provision of computer services, namely “hosting and maintaining the web sites of others on a computer server for a global computer network since November 27, 2000.” Complainant states that the homepage of its website is located at , and shows the use of the INTELLOGY mark in commerce. Identical Domain Name Used by Respondents

Complainant alleges that the second level domain of Respondents' domain name, , is identical to Complainant's Trademark. Respondents Have No Rights or Legitimate Interests to Disputed Domain Name

Complainant alleges that Respondents have no rights or legitimate interests in the Disputed Domain Name, as “[n]o corporate records, website information, or Whois information reflects any association of the Respondents with the ‘INTELLOGY' Trademark and the disputed domain name, except for the infringement as alleged herein.” Further, Complainant asserts that does not reflect any name by which the Respondents are commonly known or in which the Respondents have any rights under paragraph 4(a)(ii) of the Policy.

Complainant further alleges that it never authorized or consented to Respondents' use of the INTELLOGY trademark, or Respondents' registration of the domain name.

Complainant contends that the website to which resolves does not use the INTELLOGY mark anywhere in the website's content, and is instead used to direct visitors to Respondents' commercial website and e-store at “”. Bad Faith Registration and Use by Respondents

Complainant asserts that Respondents' use of the Disputed Domain Name evidences their intent to confuse and mislead visitors searching for Complainant's website, by directing them to Respondents' website, which yields direct commercial benefits for Respondents, and evidences their bad faith registration and use of the Disputed Domain Name.

Complainant alleges that, in 2008, Respondents transferred the Disputed Domain Name from Karrier to IntelliGolf. As of that time, Complainant had been in continuous and active operation of a website at the “www.” domain name for the seven previous years. Complainant argues that Respondents' 2008 transfer of the Domain Name demonstrates Respondents' bad faith registration of the Disputed Domain Name, as both parties are from the U.S., and the Trademark registration was with the USPTO.

Complainant contends that Respondents' handwritten note of February 2, 2009 constituted an attempt to “bypass” Complainant's counsel, in order to sell the domain name to Complainant for valuable consideration in excess of out-of-pocket costs, and, thus, is further evidence of Respondents' bad faith.

Complainant therefore requests that the Panel issue a decision requiring to be transferred to Complainant. B. Respondents Identical Domain Name Used by Respondents

Respondents admit that the Domain Name is identical to the INTELLOGY trademark in which Complainant asserts it has rights. Respondents argue, however, that they have rights superior to and independent of Complainant in the INTELLOGY trademark, and that such rights are publicly noted on the “Trademarks Notice” page of their website.3 Respondents Have Rights and Legitimate Interests in the Disputed Domain Name

Respondents deny that they have no rights or legitimate interests in the Disputed Domain Name under paragraph 4(a)(ii) of the Policy.

Respondents contend that they have used the Disputed Domain Name legitimately in commerce since February 6, 2000, in connection with the promotion of their line of sports-enhancing products and technology, which are marketed under an “intelli-” family of products, namely: Intelligolf, Intelligames, Intellitimer, Intelliswim, and IntelliGPS.

Respondents explain at Section III of Annex A that their use of the word “intellogy” to describe their services, resulted from a contraction of their trademark INTELLIGOLF and “technology.” Respondents state that they initially used the term “intellilogy,” but also began using the term “intellogy” in October 1999, following the recommendation of Michael E. Bryant, who suggested the change for ease of pronunciation and because he preferred the spelling of “intellogy” to “intellilogy” (see Response Annex 7, October 7, 1999 email to Craig Schmidt and Jim Simpkins and the October 21, 2009 Declaration of Bryant in Support of Respondent).

Respondents allege that their use of the Disputed Domain Name predates Complainant's December 8, 2000 filing for the INTELLOGY trademark, and also predates Complainant's registration and use of any other Intellogy domain names, including , , , and . Domain History and WhoIs Search Results indicate that the Disputed Domain Name was created on February 6, 2000, whereas Complainant's Domain Name was created on November 20, 2000, and Complainant's , , and domain names were created on April 1, 2002 (Response Annex 17).

In reference to Rhodes' November 21, 2005 email on behalf of Complainant, Respondents allege that Complainant admitted at that time that Complainant did not use any of the Intellogy domain names in commerce. Respondents aver that, in response to Complainant's email, they asserted their rights to and legitimate interests in the domain name, and communicated to Complainant their desire to resolve the matter, but did not receive a response.

Respondents allege that the Disputed Domain Name was legitimately assigned from Respondent Schmidt in his individual capacity, to Respondent Intelligolf on June 1, 2007, when Schmidt's business was converted from a sole proprietorship to a corporation under the laws of Delaware. Respondents allege that such assignment was proper, complete, and merely “a legal formality.” Denial of Bad Faith Registration and Use by Respondents

Respondents deny that they registered or are using the Disputed Domain Name in bad faith. They cite their willingness to communicate with Complainant to work toward a solution as evidence of their good faith in using the Disputed Domain Name.

Respondents deny Complainant's claim that they attempted to “bypass” Complainant's counsel through their reply letter of February 2, 2009. Respondents contend that Complainant was merely carbon copied on a letter that was directed to Complainant's counsel. Respondents further argue that the letter to Complainant did not constitute an offer to sell the domain name to Complainant; rather, Respondents claim, the letter was an attempt to resolve the matter without resort to litigation.

Respondents further assert that they cannot be found to have registered the Disputed Domain Name in bad faith because they were unaware of Complainant at the time they Registered the Disputed Domain Name. Respondents aver that neither Complainant's Trademark, nor Complainant's other Intellogy domain names existed at the time of Respondents' initial registration. Complainant's Bad Faith and Reverse Domain Name Hijacking

Respondents allege that Complainant's failure to contact Respondents prior to its registration of , , , and domain names, given Respondents' prior registration and ownership of the Disputed Domain Name, is evidence of Complainant's bad faith.

Respondents further argue that they were prejudiced as a result of Complainant's failure to bring this claim in a timely manner, which Respondents offer as additional evidence of bad faith on the part of Complainant.

Respondents allege that they were subject to an attempt at Reverse Domain Name Hijacking (“RDNH”) by Complainant, through Complainant's effort to harass the Respondents into relinquishing their rights to the Disputed Domain Name.

Respondents therefore request that the Panel find that “Complainant has no lawful right to own or use any form of the Intellogy or Intellogy Solutions domain names,” and that “the Complainant [ ] be ordered by the Panel to immediately cease and desist the use of any Intellogy-related domain names.” Request for Laches and Sanctions

Respondents invoke the doctrine of laches to argue that Complainant's requested remedy should be precluded. Respondents also contend that Complainant's claim was brought in the effort to harass Respondents, as Complainant has no legitimate right to the Disputed Domain Name. As a remedy for that harassment, Respondents ask that sanctions be levied against Complainant's counsel, Domingo J. Rivera, for the purpose of preventing the “harassment [of] and loss of business time and money [by]” other “unsuspecting respondents”. 6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving that:

(i) The Domain Name is identical or confusingly similar to a Trademark or service mark in which the Complainant has rights; and

(ii) The Respondents have no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and used in bad faith.

Failure to prove any one of these factors is fatal to the Complaint. A. Identical or Confusingly Similar

Complainant has demonstrated its rights in the trademark INTELLOGY by virtue of its federal registration (Complaint Annex 5), which is valid and subsisting given the USPTO's acceptance of Complainant's 2007 Section 8 and Section 15 Declaration (Complaint Annex 7). This registration constitutes prima facie evidence of the validity of Complainant's trademark.

Respondents' argument that it has prior rights in the INTELLOGY trademark (and also in INTELLILOGY) and that Complainant's registration is therefore “inappropriate” is unavailing. Even if Respondents did establish rights in the INTELLOGY mark prior to Complainant, that does not mean that Complainant's mark is “inappropriate” or should be disregarded by the Panel. These marks may be able to coexist given the different goods and services offered by the parties. At the minimum, the Panel concludes that Respondents has failed to present the necessary “compelling” evidence that Complainant's trademark registration should be deemed invalid. No Zebra Network Ltda v. B, Inc.,WIPO Case No. D2009-1071 (October 26, 2009).

As Complainant and Respondents agree, the domain name is identical to the INTELLOGY trademark. Complainant has therefore sustained its burden under the first factor of paragraph 4 of the Policy. B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondents may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well-established that the burden of proof remains on the Complainant to prove an absence of rights or a legitimate interest. Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network,WIPO Case No. D2007-1318 (October 29, 2007); Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (December 10, 2007); Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270 (June 6, 2000); WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 2.1. Panels, however, have long recognized the inherent difficulties of proving a negative. Worldwide Pants Inc. v. VisionLink Communications Group, Inc.,WIPO Case No. D2008-1796 (February 10, 2009). Accordingly, panels generally require the complainant to come forward with a prima facie showing that respondent has no rights or legitimate interests; thereafter, the burden of production shifts to respondent, even though the burden of proof always remains on the complainant. Asian World of Martial Arts Inc. supra.

Complainant has made the requisite prima facie showing in this case. The burden of coming forward with evidence of rights or a legitimate interest thus shifts to Respondents. To satisfy that burden, Respondents have submitted voluminous evidence that, they assert, establish their rights and legitimate interests in the Disputed Domain Name.

In considering Respondents' evidence, there is a threshold issue of whether to consider only the use by the current registrant, Intelligolf, or whether the Panel also may consider the use by the former registrant, Karrier. Generally, a transfer of ownership of a domain name constitutes a new registration, and panels typically look only at the claimed rights and interests of the current registrant in determining whether that registrant has rights or legitimate interests. WIPO Overview of WIPO Panel Views on Selected UDRP Questions; No Zebra Network Ltda v. B, Inc.,WIPO Case No. D2009-1071 (October 26, 2009); Daimler AG v. William Wood,WIPO Case No. D2008-1712 (February 25, 2009); Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI),WIPO Case No. D2001-0782 (August 14, 2001.) Here, though, Respondents have made a compelling showing that the transfer did not effect any material change in the beneficial ownership of the domain name, since Schmidt, who was named as the administrative contact in both registrations, was the CEO of both Karrier and Intelligolf, which are affiliated entities.4 Moreover, Respondents have shown that their use of the Disputed Domain Name throughout these years has consistently promoted their Intelligolf and related sports and technology products. Thus, the Panel concludes that it is appropriate, on the facts of this case, to consider Respondents' and the prior, related registrants' rights and interests in the Disputed Domain Name.

Although Respondents are not commonly known by the name “Intellogy,” Respondents have established that they market and offer for sale a range of software products that begin with “intelli-,” including Intelligolf, Intelligames, Intellitimer, Intelliswim, and IntelliGPS, and that they use the INTELLOGY designation as an umbrella designation for their INTELLIGOLF technology. See Response Annex 8 (marketing materials showing use of the INTELLOGY designation since at least 1999). Indeed, Respondents assert that they registered the Disputed Domain Name because it is a contraction of their trademark INTELLIGOLF (which has been registered with the USPTO since 1999) and “technology,” and that they did so in their effort to market and sell the above-named sports-enhancing software. See Afrisport Intellectual Property (PTY) Ltd. v. D,WIPO Case No. D2007-1449 (November 26, 2007) (finding the use of a potentially descriptive contraction to be permissible). Respondents' assertion that they have used the INTELLOGY designation in this way is credible given that Respondents market and sell an entire family “intelli-” named software products and technology.5

Given the strength of Respondents' showing, the Panel finds that the Respondents had and continue to have rights and legitimate interests in the Disputed Domain Name, and that they have used the Disputed Domain Name in connection with a bona fide offering of goods or services. C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that respondent has registered or has 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 respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) respondent has 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 respondent has engaged in a pattern of such conduct; or

(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website 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 website or location or of a product or service on respondent's website or location.

Complainant has failed to prove that any of these circumstances are present in this case, or that Respondents otherwise registered and used the Disputed Domain Name in bad faith.

As was the case with respect to the rights and legitimate interests factor addressed above, it is necessary to determine whose bad faith is at issue in the instant case. Because the acquisition by Intelligolf, the current registrant, constitutes a new registration, it is appropriate to consider Intelligolf's intentions and knowledge at the time of the registration. No Zebra Network Ltda v. B, Inc.,WIPO Case No. D2009-1071 (October 26, 2009).

Because the parties had corresponded in 2005, Respondents were aware of Complainant and its trademark at the time that they acquired the Disputed Domain Name from Karrier in 2008. Such knowledge, however, is not of itself determinative of bad faith. That is because Karrier had been making a legitimate use of the Disputed Domain Name, and Respondents have persuasively showed that they believed they had the right to continue to make that use. Thus, it is evident that Respondents did not acquire the Disputed Domain Name for the purpose of selling it to the Complainant (the offer to sell a domain name in which a registrant has rights is not necessarily indicative of bad faith, Etam, plc v. Alberta Hot Rods,WIPO Case No. D2000-1654), did not acquire the Disputed Domain Name to prevent Complainant from reflecting its INTELLOGY trademark in a domain name (and, it is worth noting, Complainant already has registered several intellogy-based domain names), did not acquire the Disputed Domain Name to disrupt the business of Complainant (who does not appear to be a competitor of Respondents), and did not acquire the Disputed Domain Name to profit from confusion with Complainant and its mark. To the contrary, Respondents acquired this domain name to continue to promote their INTELLIGOLF technology, which they long had marketed and continued to market under the designation INTELLOGY.

Complainant has thus failed to establish that Respondents registered and used the Disputed Domain Name in bad faith. 7. Reverse Domain Name Hijacking

Respondents have requested a finding of Reverse Domain Name Hijacking (“RDNH”), which is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1. Although Complainant has not succeeded in this proceeding, the Panel finds that Complainant has not committed RDNH.

A finding of RDNH is appropriate “if Complainant knew of Respondent's unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use and nevertheless brought the Complaint in bad faith.” Futureworld Consultancy (pty) Ltd. v. Online Advice,WIPO Case No. D2003-0297 (July 18, 2003). AIDA Cruises German Branch of Societá di Crociere Mercurio S.r.L. v. Enspire Technologies (PVT) Ltd.,WIPO Case No. D2008-1471 (December 17, 2008). That standard is not met in this case.

The Panel rejects Respondents' argument that Complainant must have acted in bad faith because it has no rights in the INTELLOGY trademark. Complainant's incontestable federal registration is powerful evidence of Complainant's trademark rights, and its rights to use the INTELLOGY trademark and related domain names. As discussed above, Respondents' prior use of the INTELLOGY mark for unrelated services does not vitiate Complainant's trademark rights.

Moreover, the Panel notes that Respondents have not sought to register INTELLOGY as a trademark and do not appear to use that mark on the home page of their website. Furthermore, there is no evidence that Respondents had previously disclosed to Complainant the materials it submitted as part of this proceeding. Thus, prior to filing the Complaint, Complainant had no actual knowledge of Respondents' prior use of the INTELLOGY mark in connection with its Intelligolf technology goods and services.

Once all the evidence was submitted, the Panel determined that Complainant failed to sustain its burden under paragraph 4 of the Policy, but Complainant's conduct in filing the Complaint was not so abusive as to constitute RDNH. Complainant owned an incontestable registration, Respondents had no registration, and Respondents did not seem to be making any legitimate use of the INTELLOGY mark on the home page of its website. Moreover, although the Panel understands that Respondents' offer to try to settle this dispute was a good faith effort to avoid the expense and inconvenience of litigation, Complainant had a basis for suspecting bad faith when Respondents hinted that they were willing to sell the Disputed Domain Name to Complainant at a profit.

In sum, though Complainant ultimately did not prevail, the Panel concludes that it did not bring the Complaint in bad faith. Accordingly, the Panel denies Respondents' request that the Panel find Complainant guilty of RDNH. 8. Decision

For all the foregoing reasons, the Complaint is denied. The Panel declares that the Complaint was not brought in bad faith and does not constitute Reverse Domain Name Hijacking.

David H. Bernstein
Sole Panelist

Dated: November 24, 2009

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