10th Nov 2005

National Arbitration Forum

DECISION

InCorp Services, Inc. v RareNames, WebReg

Claim Number: FA0509000559911

PARTIES

Complainant is InCorp Services, Inc. (“Complainant”), represented by Karl S. Kronenberger, of Kronenberger & Associates, 220 Montgomery Street, Suite 1920, San Francisco, CA 94104.Respondent is RareNames, WebReg (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <incorp.com>, registered with DomainDiscover.

PANEL

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

Honorable Karl V. Fink, (Ret.), as Panelist.

David Sorkin, as Panelist.

Daniel B. Banks, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 13, 2005.

On September 13, 2005, DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <incorp.com> domain name is registered with DomainDiscover and that the Respondent is the current registrant of the name.DomainDiscover has verified that Respondent is bound by the DomainDiscover 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 September 13, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 3, 2005 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@incorp.com by e-mail.

A timely Response was received and determined to be complete on October 17, 2005.

A timely Additional Submission was received from Complainant and determined to be complete on October 24, 2005.

A timely Additional Submission was received from Respondent on October 31, 2005.

On October 27, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink, David Sorkin and Daniel B. Banks, Jr., as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant sells resident agent and corporate services such as registration, formal incorporation requirements, and administration of business entities under the brand of “InCorp” and has operated as such since January 1998.It holds a registered trademark, service mark and trade name registration for the word “INCORP” in the State of Nevada.Such registration creates a presumption that Complainant has rights in the mark.Also, Complainant has common law rights in the mark.The word “INCORP” is an arbitrary, non-descriptive term and is not associated to a particular thing.As such, it is entitled to strong per se Common Law trademark protection.And, the mark has acquired secondary meaning in the minds of the public as the result of marketing, sales, usage and passage of time.Complainant has used the mark since at least January of 1998; has spent significant sums on advertising its mark to customers worldwide; has seen tremendous sales growth under the brand name; and, has become identified worldwide with the services it provides.Also, there have been many instances of actual customer confusion regarding the disputed domain name because the disputed domain name is identical to Complainant’s mark.

Respondent has no rights or legitimate interests in respect of the domain name.It has never been known by the name and has never used the name in association with a bona fide offering of goods or services.Respondent is a company that is in the primary business of selling domain names and has been involved in at least six other UDRP arbitrations that have resulted in panel rulings terminating domain name registrations.Respondent has an established pattern of registering domain names that contain others’ marks purely with the intent of selling such domains for a profit.Respondent is using the disputed domain name to link to competitor services for which Respondent receives“pay-per-click” commissions. Respondent is not making a fair or legitimate use of the domain name and registered it with the intent to sell it for a profit.This is evidenced by Exhibit F which a print of Respondent’s website that contains “InCorp.com is for sale! $22,000.”In addition, Respondent has also made offers to sell the disputed domain name to Doug Ansell, CEO of Complainant corporation for the sums of $10,000, for $9,300 and most recently on July 19, 2005 for $18,000.

The domain name was registered and is being used in bad faith.This is evidenced by placement of the advertising links to competitors.Such use to attract Internet users by creating a likelihood of confusion constitutes bad faith.Also, Respondent was aware or should have been aware of Complainant’s prior use of the mark.This is evidenced by the fact that Respondent has consistently copied the exact, unique graphical representation of the Complainant’s mark by capitalizing the “I” and the “C” in “InCorp” in its advertisements for sale of the domain name.

B. Respondent

Complainant has no enforceable trademark rights under the UDRP to the term Incorp.This a generic term that describes the essential features and characteristic of Complainant’s business, namely providing incorporation services for businesses.Incorp is an abbreviation for incorporation.Complainant has not proven any common law rights through secondary meaning.There are numerous third-party uses of the mark and another party has a registered trademark for INCORP.

Respondent has a legitimate interest in the disputed domain name because it is a generic term and Respondent uses it in connection with the bona fide offering of goods and services.Selling legitimate common word domain names constitutes the bona fide offering of goods and service and not bad faith.Respondent had no knowledge of complainant’s mark when it was registered and there is no basis for such knowledge since there is no U.S. registered trademark.It is well settled that descriptive or generic terms do not provide the holder with a right to an identical or confusingly similar domain name.

Complainant has not demonstrated that the domain name was registered and is being used in bad faith.In fact, there is another company with a U.S. registered trademark for INCORP.That company is Mead Data Central, registration No. 1409012.“Incorp” is a common generic term that appears on over 500,000 third party web pages unrelated to Complainant.There is no evidence that Respondent had knowledge of Complainant or its mark at the time of registration.Capitalization of the “I” and “C” in InCorp is extremely common with web site names and any similarity is strictly coincidental.

Complainant’s principal allegation of bad faith is that Respondent has offered to sell the disputed domain name, however the mere offer for sale of a descriptive term domain name does not establish bad faith under the Policy.Registration with the purpose of selling the domain name registration to Complainant may constitute bad faith but there is no evidence that Respondent registered the domain name with Complainant in mind or that Respondent was even aware of the existence of Complainant or its purported trademark when the domain name was registered.The reason Respondent registered the domain name is because it was deleted and incorporates a common word.Registration of a deleted domain name does not constitute bad faith.

With respect to Complainant’s assertion that other panels have held against Respondent in other domain name disputes, there are also a number of decisions decided in favor of Respondent.Respondent is the registrant of hundreds of thousands of domain names and is a target for trademark holders.That there are only a few adverse decisions proves Respondent’s position that it does not target trademarks but only generic and descriptive terms.The facts of this case are that Respondent registered <incorp.com> because it incorporates an abbreviation of the common terms incorporate/incorporation.This does not constitute bad faith.

C. Additional Submissions

In an additional submission, Complainant asserts that Respondent did not provide any contact information as required by the rules and evidence is either missing or not provided by one with personal knowledge of the facts.Reference is made to the affidavit of Rochelle Hastings which does not state the name of the company for which she works nor does it state how she would have personal knowledge of the facts she asserts.Complainant requests that this declaration be stricken or, in the alternative the Panel should grant it only the slightest evidentiary weight.

Respondent filed a timely additional submission addressing the concerns of Complainant.In that additional submission, Respondent attaches an additional affidavit of Rochelle Hastings identifying her role as Legal Manager for BuyDomains Holdings, Inc.Rarenames Webreg is a d/b/a of Rarenames, Inc., which a subsidiary of BuyDomains Holdings, Inc.

FINDINGS

The disputed domain name is identical to a mark in which the Complainant claims rights, however, the panel finds that the mark is a generic term and that Complainant’s state trademark registration is not adequate to establish exclusive rights to the term.

The panel finds that the Respondent is in the business of selling domain names consisting of generic or descriptive terms and that such is a bona fide offering of goods or services pursuant to Policy.As such, Respondent has demonstrated rights and legitimate interests in the disputed domain name.

The panel finds the evidence insufficient to show that Respondent was aware of Complainant or its mark when it registered the disputed domain name.Also, the domain name is made up of generic or descriptive terms.As such, the evidence does not support a finding of bad faith registration and use.

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 must 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 and/or Confusingly Similar

The disputed domain name is comprised of the term “INCORP,” which Complainant has registered as a trademark in the State of Nevada.INCORP is descriptive of the services offered by Complainant, and presumably also of the services for which Respondent markets the disputed domain name.Complainant’s state trademark registration does not itself constitute evidence that the term has acquired secondary meaning, nor has Complainant presented other substantial evidence of secondary meaning.The panel finds that Complainant has failed to demonstrate that it has protectible trademark rights for purposes of the Policy.

Rights or Legitimate Interests

Respondent is in the business of selling domain names consisting of generic or descriptive terms.The Panel finds that selling domain names consisting of generic or descriptive terms is a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).See Front Range Internet, Inc. v. Murphy, FA 145231 (Nat. Arb. Forum Apr. 4, 2003) (“In some circumstances, the trading of domain name registrations is considered a bona fide offering of goods and services.”); see also Fifty Plus Media Corp. v. Digital Income, Inc., FA 94924 (Nat. Arb. Forum July 17, 2000) (finding that the complainant failed to prove that the respondent had no rights in the domain name and had registered and used the domain name in bad faith where the respondent is an Internet business which deals in selling or leasing descriptive/generic domain names).

Additionally, Complainant’s mark is not distinctive, and, therefore, Complainant should not be able to prevent others from using the term “INCORP.”The Respondent can demonstrate rights or legitimate interests in a domain name when it is identical to a non-distinctive trademark.The evidence is not sufficient to establish fame or strong secondary meaning to the disputed domain name.See Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000) (finding that the respondent has rights and legitimate interests in the domain name where the complainant submitted insufficient evidence to establish either fame or strong secondary meaning in the mark such that consumers are likely to associate <cartoys.net> with the CAR TOYS mark); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that the respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).

Registration and Use in Bad Faith

The evidence does not support a finding that Respondent aware of Complainant or its mark when it registered the disputed domain name.Respondent could not have registered the domain name in bad faith registration if it was not aware of Complainant at the time of registration.See It Takes 2 v. C.,J., FA 384923 (Nat. Arb. Forum Feb. 15, 2005) (“[I]n the absence of any evidence of knowledge on the part of Respondent of Complainant, its mark or its services at the time Respondent acquired the domain name, the Panel finds Complainant has failed to establish registration in bad faith.”); see also U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (“Without knowledge of Complainant or its claim of right in the mark, it is difficult to see how Respondent could have the specific intent required for it to act in bad faith against the rights of Complainant.”)

Complainant’s domain name is made up of generic or descriptive terms.The Panel finds that Respondent has not exhibited bad faith by registering a domain name comprised of generic or descriptive terms.See Superiority, Inc. v. none/Motherboards.com, D2003-0491 (WIPO Oct. 9, 2003) (“While Complainant may coincidentally have a registration for the words ‘just bulbs,’ the words also have a generic or descriptive meaning which Respondent was using or taking advantage of in selling bulbs of various types. While Apple may have a trademark for Apple for computers, it has no rights to stop others from using ‘apple’ or <apple.com> to sell apples.”); see also Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Given that the term ‘British meat’ is the normal and natural term to describe meat produced in Britain, the Panel is not satisfied that the [<britishmeat.com> and <britishmeat.org>] Domain Names would be regarded by Internet users as indicating a website of the Complainant.”).

Respondent’s registration and use of the disputed domain name was not in bad faith pursuant to Policy ¶ 4(a)(iii) because it is not parasitic—Respondent is a reseller of generic domain names.See John Fairfax Publ’n Pty Ltd v. Domain Names 4U, D2000-1403 (WIPO Dec. 13, 2000) (finding legitimate interests and no bad faith registration where the respondent is a seller of generic domain names); see also Lumena s-ka zo.o. v. Express Ventures LTD, FA 94375 (Nat. Arb. Forum May 11, 2000) (finding no bad faith where the domain name involves a generic term, and there is no direct evidence that the respondent registered the domain name with the intent of capitalizing on the complainant’s trademark interest).

DECISION

Having failed to establish the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Daniel B. Banks, Jr., Panelist

Dated: November 10, 2005

Honorable Karl V. Fink, (Ret.) Panelist

David Sorkin, Panelist