7th Oct 2002

DECISION

Impact Technologies Group, Inc. v. Impact.com, Inc.

Claim Number: FA0208000117903

PARTIES

Complainant is Impact Technologies Group, Inc., Charlotte, NC (“Complainant”), represented by Kimberly A. Betz of Parker Poe Adams & Bernstein, LLP.Respondent is Impact.com, Inc., Los Angeles, CA (“Respondent”),[1] represented by Ari Goldberger of ESQwire.com.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <impact.com>, registered with NamesDirect.com, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

David E. Sorkin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 8, 2002; the Forum received a hard copy of the Complaint on August 19, 2002.

On August 9, 2002, NamesDirect.com, Inc. confirmed by e-mail to the Forum that the domain name <impact.com> is registered with NamesDirect.com, Inc. and that the Respondent is the current registrant of the name.NamesDirect.com, Inc. has verified that Respondent is bound by the NamesDirect.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 9, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@impact.com by e-mail.

A timely Response was received and determined to be complete on September 9, 2002.

On September 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.Respondent requests that the Complaint be dismissed, and that the Panel enter a finding that Complainant has engaged in reverse domain name hijacking.

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges that the disputed domain name is identical or confusingly similar to various trademarks in which it has rights; that Respondent lacks rights or legitimate interests in the name because, inter alia, it has not used the name in connection with a bona fide offering of goods or services and is not commonly known by the name; and that Respondent registered and has used the name in bad faith, based primarily upon the manner in which Respondent replied to an inquiry regarding a possible purchase of the name.

B. Respondent

Respondent contends that it has a legitimate interest in the disputed domain name because it acquired and intended to use the name for a bona fide offering of goods or services; because its current use of the name qualifies as a bona fide offering of goods or services; because it has been commonly known by the name; and because the name corresponds to a common generic word.Respondent also contends that it has neither registered nor used the name in bad faith, having acquired the name for reasons unrelated to Complainant’s trademark rights, and argues that its reply to Complainant’s inquiry concerning the name is not indicative of bad faith.Finally, Respondent contends that Complainant has engaged in reverse domain name hijacking by initiating this proceeding without any plausible basis for establishing bad faith or lack of legitimate interests.

FINDINGS

The Panel finds that the disputed domain name is identical to a trademark in which Complainant has rights, and that Respondent lacks rights or legitimate interests in respect of the disputed domain name.However, the Panel finds that the disputed domain name was neither registered nor used in bad faith.The Panel declines to enter a finding as to reverse domain name hijacking.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical or Confusingly Similar

Complainant is the owner of three trademarks, including a word mark IMPACT that has been registered on the Principal Register of the U.S. Patent and Trademark Office since 1994.Disregarding the generic “.com” suffix, the disputed domain name is identical to this mark.

Rights or Legitimate Interests

Respondent submitted evidence that it purchased the disputed domain name in 1999 for $50,000, intending to use it for an online media business, and that it subsequently invested an additional $20,000 in that venture, together with nonmonetary contributions.However, it appears that Respondent has since abandoned that venture.[2]

Respondent further contends that its current use of the domain name—to redirect web browsers to a search engine that provides links associated with the word “impact”—constitutes a bona fide offering of goods or services, and that it possesses legitimate interests in the name on this basis.While it is true that similar activities may qualify as bona fide offerings, Respondent’s current use of the domain name does not seem to have anything to do with the word “impact” apart from automatically generating search engine queries that include the word.Furthermore, there is no evidence that the link or redirection to an apparently unrelated site represents any sort of business venture whatsoever.The record before the Panel is woefully inadequate on this point; indeed, the primary evidence concerning Respondent’s current or recent use of the domain name consists of a few printed web pages furnished by Complainant, and in any event Respondent appears to have since deactivated the links or redirection to the search engine.

Respondent’s next argument is that it possesses legitimate interests because it is commonly known by its corporate name, Impact.com, Inc., which corresponds to the disputed domain name.Respondent has submitted evidence reflecting its corporate name, but no evidence of any common knowledge thereof.

Finally, Respondent claims it has legitimate interests in respect of the disputed domain name because the name corresponds to a common generic word.This argument appears to be related to Respondent’s claim of legitimate interests arising from its use of the domain name to redirect browsers to a search engine, and to that extent it fails for the same reasons.There is no evidence that Respondent is using the domain name in its generic sense in any other manner, and Respondent does not appear to be in the business of speculating in generic domain names, which in appropriate circumstances may support a finding of legitimate interests.

The Panel concludes that Respondent does not have rights or legitimate interests in respect of the disputed domain name.

Registration and Use in Bad Faith

The Policy requires proof of bad faith both in Respondent’s initial registration of the disputed domain name,[3] and in Respondent’s subsequent use of the name.In this case, the Panel is not persuaded that either of these events occurred in bad faith.

Complainant points to Respondent’s reply to Complainant’s inquiry concerning a possible purchase of the domain name as evidence of bad faith.This correspondence was initiated by Complainant.Respondent replied that it had bought the domain name “for alot [sic] of $”; that its total investment in the domain name was “close to $100,000”; and that it would sell the name only if it could recoup that investment.While Respondent may have exaggerated the extent of its investment somewhat, its reply was reasonable under the circumstances, and the Panel does not consider this correspondence to be indicative of bad faith.Furthermore, there is no evidence that Respondent acquired the domain name for reasons related to Complainant or its trademarks, and Respondent has submitted persuasive evidence to the contrary.[4]

Reverse Domain Name Hijacking

Respondent requests that the Panel enter a finding that Complainant has engaged in reverse domain name hijacking, based upon Respondent’s claim that the Complaint lacks a plausible basis for establishing bad faith or lack of legitimate interests.In light of the Panel’s finding that Respondent does lack rights or legitimate interests in the disputed domain name, the only viable ground for a finding of reverse domain name hijacking would be that Complainant should have known, at the time that it filed the Complaint, that it could not prevail on the issue of bad faith registration and use.Since the Panel’s finding on that issue is based primarily upon evidence submitted by Respondent and previously unavailable to Complainant, the Panel declines to enter a finding that Complainant has engaged in reverse domain name hijacking.

DECISION

The Panel finds that the disputed domain name was neither registered nor used in bad faith.Complainant’s request for transfer of the disputed domain name <impact.com> is DENIED.

David E. Sorkin, Panelist
Dated:October 7, 2002


[1] The original Complaint designated Impact.com, Inc. as Respondent.Brad Billik, the administrative contact for the disputed domain name, was subsequently designated as the Respondent in this proceeding, apparently as a result of an administrative error not attributable to either of the parties.The parties do not appear to dispute that the proper Respondent is Impact.com, Inc.

[2] Respondent contends that its intent at the time of registration to use the domain name for a bona fide purpose is all that is required to prove legitimate interests.The Panel disagrees.Proof of such intent likely precludes a finding of bad faith registration, but it does not demonstrate that Respondent currently possesses any rights or legitimate interests, as required by the Policy.

[3] It appears from the WHOIS database entry for the disputed domain name that the initial registration occurred in 1992, but Respondent states that it acquired the domain name from the previous registrant in 1999.The Panel reads the reference to “registration” in Paragraph 4(a)(iii) of the Policy as referring to the Respondent’s initial registration or acquisition of the domain name.See Ciccone v. Parisi, No. D2002-0847 (WIPO Oct. 12, 2000).The relevant event for purposes of assessing bad faith registration is therefore Respondent’s acquisition of the domain name in 1999.

[4] It does not appear that Respondent’s now-abandoned business venture—an online media business providing information about sports, music, and fashion—would have infringed upon Complainant’s trademarks, all of which relate to the fields of insurance and financial services.Furthermore, Complainant’s claim that it “owns the trademark for ‘impact,’” Complaint at 6, is not entirely accurate.It would have been more precise to say that “Complainant is one of numerous entities that hold registered word marks on the Principal Register of the U.S. Patent and Trademark Office comprised solely of the word ‘impact.’”