Imaginit.com

The timeline behind imaginit.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Rand A Technology Corp v. Peter Janus Claim Number: FA0901001243749 PARTIES Complainant is Rand A Technology Corporation (“Complainant”), represented by Lori Henderson, Ontario, Canada. Respondent is Peter Janus (“Respondent”), Ontario, Canada. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <imaginit.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Hector A. Manoff as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on January 21, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 22, 2009. On January 21, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <imaginit.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 January 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 17, 2009 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@imaginit.com by e-mail. A timely Response was received and determined to be complete on February 17, 2009. On February 19, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hector A. Manoff as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant Rand A Technology Corporation owns the trademarks for IMAGINIT TECHNOLOGIES registered with the United States Patent and Trademark Office on April 10, 2007 (Reg. No. 3,227,768 and 3,227,769) and IMAGINIT TECHNOLOGIES – A RAND WORLDWIDE COMPANY and IMAGINIT registered with the Canadian Intellectual Property Office on July 25, 2008 (Reg. No. 1,299,389) and December 30, 2008 (Reg. No. 1,300,566). The disputed domain name <imaginit.com> is confusingly similar to Complainant’s registered trademarks. Respondent’s domain name <imaginit.com> lists links to competitor’s websites and to products that are used and sold by Complainant, creating confusion for their consumers, who may think that Complainant is endorsing those products and companies. Respondent has no rights or legitimate interests in respect of the domain name because Respondent’s use of the domain name is not in connection with a bona fide offering of goods or services. Rather, Respondent has created a false association between the domain name and Complainant’s business, by providing sponsored listings to competitor’s websites. The domain name should be considered as having been registered and being used in bad faith because Respondent is offering the domain name for sale, and since they advertise products/services, which are actually sold by the Complainant B. Respondent Respondent Peter Janus denies that he had registered the domain name <imaginit.com> in bad faith. Rather, he states he registered the domain name in 1999, when the Complainant did not even have an existing company. He further asserts that his corporation, Imaginit Designs, Inc., was established ten years ago and it had potential use of the domain name <imaginit.com> for his company. He adds that his future intended use for <imaginit.com> is for his clothing line that he would launch in fall 2009 and he assures that he will not perform any conflicting service with the Complainant. Respondent also asserts that he directed his domain name to Sedo.com only in order to ascertain the domain name’s value. In this regard, he asserts that he did not answer an email from Complainant, which offered him to buy his domain name <imaginit.com>. Respondent further states that, after investigating the status of his domain name, he found out that it was on an “auto-generated” or generic system from Sedo.com, which produced the temporary “conflicting services” by listing links to products that are sold by Complainant. He also states that, upon being made aware of that situation, he redirected his domain name. Respondent also asserts that no financial gain was made during the described accidental alignment. FINDINGS (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 rights or legitimate interests in respect of the domain name; and (3) the domain name has not been registered nor is being used in bad faith. 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 Complainant provides evidence of the registration of its IMAGINIT TECHNOLOGIES mark with the United States Patent and Trademark Office (“USPTO”) on April 10, 2007 (Reg. No. 3,227,769) and the Canadian Intellectual Property Office (“CIPO”) on July 25, 2008 (Reg. No. 1,299,389). The Panel finds these registrations establish Complainant’s rights in its IMAGINIT TECHNOLOGIES mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Cactus Rests. Ltd. v. Web Master, FA 671297 (Nat. Arb. Forum May 23, 2006) (“The Panel should not “second guess” the Patent Offices of Canada and the USA to say that Cactus Club should not have been registered as a trademark.”). Complainant contends Respondent’s disputed domain name is confusingly similar to Complainant’s IMAGINIT TECHNOLOGIES mark. Respondent’s <imaginit.com> domain name incorporates Complainant’s IMAGINIT TECHNOLOGIES mark with the deletion of the term “technologies,” and the addition of the generic top-level domain “.com.” The Panel finds these alterations do not sufficiently distinguish the disputed domain name from Complainant’s mark and, thus, do not prevent the disputed domain name from being confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK). Rights or Legitimate Interests The Panel finds that Complainant has failed to allege facts sufficient to create a prima facie case for lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co. FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the panel may decline to transfer the disputed domain name). Respondent asserts it operates a company “Imaginit Designs Inc.” Respondent provides evidence of its operation in the form of several marketing materials, and the registration of the company name with the Ontario Ministry of Consumer and Commercial Relations, which dates back to 1999, prior to Respondent’s use and registration of the alleged marks. Therefore, the Panel finds Respondent has sufficiently demonstrated a legitimate interest in the domain name pursuant to Policy ¶ 4(c)(ii), since the domain name reflects Respondent’s company name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002) (holding that the respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990s). Furthermore, Respondent has provided sufficient evidence of demonstrable preparations to use its disputed domain name in conjunction with a bona fide offering of goods upon registration pursuant to Policy ¶ 4(c)(i), by submitting the registration certificate of the company name “Imaginit Designs Inc.” with the Ontario Ministry of Consumer and Commercial Relations, which dates back to 1999. See SFX Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (holding that the respondent’s submission of an invoice demonstrating that the respondent has been planning to trade under the name PURKHON KI YADEN since at least as early as January 28, 2000, was evidence that the respondent had rights or legitimate interests in the disputed domain name). Respondent registered the disputed domain name on August 10, 2000, prior to Complainant’s asserted rights in its IMAGINIT TECHNOLOGIES mark. Since Respondent’s registration of the disputed domain name predates Complainant’s rights in its mark, the Panel finds Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because the respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by the complainant); see also Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (finding that the respondent does have a legitimate interest in the domain name where the respondent registered the disputed domain name for a legitimate business purpose prior to complainant’s application for registration of the mark and the complainant has not proven any earlier use of the mark). The Panel also finds that Respondent has concurrent rights in the disputed domain name, because Respondent operates a design business and Complainant operates a technology business. Therefore, Respondent has rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent could maintain rights in a similar mark as the complainant because the complainant and the respondent were not in the same field of business, and therefore not competitors); see also Asphalt Research Tech., Inc. v. Anything.com, D2000-0967 (WIPO Oct. 2, 2000) (“Respondent has a legitimate interest to use a trademark or domain name in which many persons hold an exclusive right in relation to different goods and services providing the goods or services are sufficiently far apart from the goods and services of others so as to distinguish the goods or services of Respondent.”). Registration and Use in Bad Faith The Panel also finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Since the Panel concludes that Respondent has rights and legitimate interests in the <imaginit.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”). The Panel finds that Respondent has not registered or used the disputed domain name in bad faith since he has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith). In addition, the inclusion of a disclaimer on a Respondent’s website can in appropriate circumstances be further evidence of good faith use of a domain name. See America Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. For., April 11, 2003). There is no evidence that Respondent registered the disputed domain name for any reason other than to have a domain name for his company “Imaginit Designs, Inc.” Complainant has not presented any evidence that (a) Respondent registered the mark primarily for the purpose of selling or transferring it to Complainant, (b) that Respondent is a competitor using the mark to disrupt Complainant’s business, or (c) that Respondent is using the disputed domain name to attract customers to its website by deliberately causing confusion and benefiting from the good will associated with Complainant’s mark. Furthermore, taking into account that Respondent provided evidence that he was not attempting to sell the disputed domain name by submitting an email from Complainant which included an offer to buy it —which was not answered by Respondent— the Panel finds that Respondent has not registered or used the <imaginit.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)). Additionally, since Respondent’s registration of the disputed domain name predates Complainant’s rights in its IMAGINIT TECHNOLOGIES mark, the Panel finds Respondent did not engage in bad faith registration or use under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant). DECISION Since Complainant has not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <imaginit.com> domain name REMAIN with Respondent. Héctor A. Manoff, Panelist Dated: March 5, 2009 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.