Online Resources, Inc. v. On-Line Resources, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Online Resources,

Inc. v. On-Line Resources

Case No.

D2001-0257

1. The Parties

The Complainant is

Online Resources, Inc. located at 7600 Colshire Drive, McLean, Virginia

22101, USA, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.

The Respondent is On-Line

Resources located at 597 Wendy Drive, Newbury Park, California 91320, USA,

proceeding pro se.

2. The Domain Name

and Registrar

The domain name at

issue is <onlineresources.com>. The domain name is registered with

Network Solutions, Inc.

3. Procedural Background

Complainant filed its

Complaint under the ICANN Uniform Domain Name Dispute Resolution Policy

(the "Policy") with the World Intellectual Property Organization

Arbitration and Mediation Center (the "Center") by e-mail on February

16, 2001, and in hardcopy on February 20, 2001. The Center verified that

the Complaint satisfies the formal requirements of the Policy, the Rules

for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

and the Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (the "Supplemental Rules"). On March 7, 2001, the Center

formally commenced this proceeding and set March 26, 2001 as the date for

filing a Response.

On March 26, 2001,

Respondent attempted to email its Response to the Center. It apparently

experienced difficulties attaching its Response to the email, and sent multiple

emails to the Center. The Center received ten separate emails, which included

the Response. The Center acknowledged receipt of the Response by email dated

March 28, 2001. On March 29, 2001, Respondent sent a "final

completed version" of its Response to the Center.

On April 3, 2001, the

Complainant filed a motion for default based on the contentions that Complainant

had not received a copy of the Response as required by the Policy and that

the submission of the "final completed version" of the Response

on March 29, 2001, was untimely. Respondent replied that it had been experiencing

e-mail difficulties throughout the relevant period, that it had attempted

to send the Response to all parties, and that Complainant should have contacted

it before April 3, 2001 to express its concerns.

Neither party requested

a three-member panel. Accordingly, on April 18, 2001, after clearing for

potential conflicts, the Center appointed David H. Bernstein as the sole

panelist. The Panel has reviewed the Complaint and agrees with the Center’s

assessment that it complies with the Policy, Rules and Supplemental Rules.

On April 23, 2001, following

its initial review of the case file, the Panel issued an order requesting further

submissions pursuant to Rule 12. The parties were asked to provide one or more

affidavits providing details concerning (1) all communications, oral, written

or electronic, between the parties prior to the filing of the Complaint in this

proceeding, including, where available, copies of any letters, emails, or contemporaneous

notes of telephone conversations; and (2) the content of the Respondent’s website

at <onlineresources.com> (and, where available, screen shots of the website)

both (i) prior to the first contact between the parties and (ii) after the first

contact between the parties but before the filing of the Complaint. Both parties

timely submitted affidavits by April 30, 2001. Pursuant to Rule 10(c),

the Panel reset the date for expected decision to May

18, 2001.

4. Factual Background

Complainant is a Delaware

corporation with its principal place of business in Virginia. It has used

the service mark "ONLINE RESOURCES" in connection with online

banking services since 1990. In May 1995, it received a United States service

mark registration for the mark for "providing banking services accessed

via an online transaction display screen telephone system."

Respondent is a California

business. It registered the domain name in 1996.

5. Parties’ Allegations

Complainant states

that its registration constitutes prima facie evidence of its exclusive

ownership of the mark "ONLINE RESOURCES" and that it has spent

significant sums advertising and marketing its service under the mark, with

the result that the mark is distinctive. Complainant further avers that

the domain name is identical to its mark.

Complainant alleges

that Respondent has no rights or legitimate interests in respect of the

domain name at issue because: (1) Complainant’s trademark registration predates

Respondent’s registration of the domain name; (2) Respondent is not Complainant’s

licensee or otherwise authorized to use the mark; and (3) Respondent does

not use the domain name to provide information regarding any goods or services

that it offers or intends to offer.

The Complaint’s allegations

of bad faith, in their entirety, are as follows:

"Upon information

and belief, Respondent has acted in bad faith by registering the domain

name ONLINERESOURCES.COM primarily for the purpose of selling the registration

to Complainant or a third party in direct violation of paragraphs 4(a)(iii)

and 4(b)(i) of the Policy."

"Upon information

and belief, Respondent has never used the domain name ONLINERESOURCES.COM

in connection with any products or services since registering the domain

name in 1996."

"Upon information

and belief, Respondent has registered the domain name ONLINERESOURCES.COM

in order to prevent Complainant from using its mark ONLINE RESOURCES in

a corresponding domain name, in direct violation of Paragraphs 4(a)(iii)

and 4(b)(ii) of the Policy."

In its affidavit in

response to the Panel’s request for additional submissions, the Complainant

states that it attempted to access Respondent’s website before the pendency

of this dispute, but found no website associated with the domain name at

issue. Moreover, Complainant says that it attempted to contact Respondent

via email and letter, but Complainant’s email was returned as undeliverable.

Eventually, Complainant’s letter was forwarded to Respondent. The letter

asked whether Respondent was interested in transferring the domain name

to Complainant. In response, Respondent’s sole proprietor called Complainant.

According to the Complainant, Respondent said that it had recently refused

an offer to sell the domain name at issue for $100,000. Later, but before

the Complaint was filed, Respondent put up a "placeholder" website

that used the name "On-Line Resources" but did not offer any goods

or services.

Respondent states that

it has used "On-Line Resources" as a service mark in connection

with information resources and software downloads via an online Bulletin

Board System since the 1980s.

Respondent alleges

that Complainant’s mark is generic, that Complainant in its registration

specifically disclaimed exclusive rights to "Online" except as

shown in the complete mark, that the registration uses an address different

from Complainant’s, and that many registered marks include "Online

Resources."

Respondent further

submits that it has never claimed to be a banking service or used its name

in that context. Respondent states that its site contains information regarding

its products and services, and has done so since 1996. (At another portion

of the Response, Respondent suggests that nonuse would be of no moment because

it has a legitimate interest in securing a priority of right, and because

the Policy does not prohibit leaving sites fallow for years without effective

use.) Respondent claims that it has never attempted to cause confusion,

but that Complainant has done so by allowing the publication of an article

in CNET News that linked Complainant’s name to Respondent’s website. Respondent

also states that Complainant’s multiple other domain name registrations,

and its failure to register the domain name before 1996, prove that its

interests are not impaired by Respondent’s registration of the domain name

at issue.

Respondent disputes

Complainant’s allegations of bad faith. It alleges that it did not register

the domain name for purposes of sale, rental, or other transfer, but to

reflect its business activities using a common term for such activities.

Respondent claims that, because the term "online resources" is

generic, the Panel may not infer that it registered the domain name in order

to prevent Complainant from using its mark or to cause consumer confusion,

and that it has not engaged in any pattern of abusive registration. It also

claims that it was encouraged by an offer of a commission to place a banner

ad for Complainant on its website, but that when it refused, Complainant

"hijacked" the site by causing domain name servers to redirect

traffic from <onlineresources.com> to Complainant’s website for two

years.

Finally, Respondent

requests that the Panel make a finding of reverse domain name hijacking

because the Complaint constitutes an abuse of the administrative proceedings.

In its affidavit in

response to the Panel’s request, Respondent agrees with most of Complainant’s

factual statements, but states that it was experiencing technical difficulties

during the period in which Complainant attempted to access its website,

and that its site and associated email address came down for a period associated

with a transfer to a different internet services provider. Respondent did

not, however, provide any printout of the content of the site prior to its

experiencing these technical difficulties. Respondent further states that

Complainant’s ultimate success in contacting it demonstrates that there

was no bad faith involved in having old contact information in the Network

Solutions, Inc. registry, and that it could not control when the registry

was updated. Respondent also states that it expressly told the Complainant’s

attorney that it had no interest in selling the domain name.

6. Discussion and Findings

Before reaching the merits,

the Panel first will address the Complainant’s motion for a default. The Panel

denies that motion. Respondent, who is appearing pro se, made a good faith effort

to submit its response by March 26, 2001, and did, indeed, submit a Response

on that date. Respondent’s failure to contemporaneously send a copy of the Response

to Complainant caused no prejudice as Respondent sent a copy shortly after it

learned of Complainant’s non-receipt. As for the "final completed version"

sent on March 29, 2001, it is not necessary for the Panel to decide whether

to accept that Amended Response, because it is able to fully resolve this matter

by considering only the March 26, 2001 Response. Thus, given Respondent’s good

faith and the lack of prejudice to Complainant, the Panel accepts the Response

and denies Complainant’s motion. Cf. Talk City, Inc. v. Robertson, Case

No. D2000-0009 (WIPO Feb. 29, 2000).

The burden for the

Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the

domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has

rights;

(ii) That

the Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) That

the domain name has been registered and used in bad faith.

In this case, the first

element has been established. Complainant has a valid registration for "Online

Resources" for services relating to online banking. Complainant’s registration

gives rise to a presumption that its mark is valid and not generic as applied

to banking services. Because Respondent has not offered any compelling evidence

to rebut the presumption of validity, the Panel concludes that Complainant has

trademark rights and that the domain name is identical to its mark. EAuto,

L.L.C. v. Triple S. Auto Parts, Case No. D2000-0047

(WIPO Mar. 24, 2000).

Complainant has failed,

however, to establish the second and third elements of the Policy. "Online

Resources" is, as Respondent points out, a fairly descriptive term

as applied to a number of different online services. Marks can vary in whether

they are generic, descriptive, suggestive, or arbitrary depending on the

goods or services to which they refer (compare "Apple" for apples,

"Apple" for lipstick, and "Apple" for computers). In

addition, Complainant has submitted no evidence that its mark has substantial

commercial strength, such that a significant number of Internet users might

well expect that any use of "Online Resources" is associated with

Complainant.

Respondent avers that

it has operated under the name "On-Line Resources" for over a

decade. Although the Panel would have preferred to receive some documentary

evidence to support this assertion, the allegation, bolstered by Respondent’s

certification, is sufficient to show prior use of this name. At the minimum,

Respondent’s evidence that it has offered computer-related services under

this name is more persuasive than Complainant’s conclusory allegations to

the contrary, and thus Complainant has failed to sustain its burden of proving

a lack of any legitimate interest. Respondent’s registration of a domain

name to reflect a business name descriptive of Respondent’s goods or services

thus constitutes a legitimate use under ¶ 4(c)(ii) of the Policy, absent

evidence that the adoption of the business name itself was illegitimate.

As for the requirement

of showing bad faith, the Complaint does not even come close. The Complaint

does no more than recite the conclusory allegations that Respondent exhibited

bad faith, hewing closely to the words of the Policy. Notably, the Complaint

does not allege any facts that show bad faith.

Complainant, in response

to the Panel’s request for further submissions, finally detailed its conversations

with Respondent. In one such conversation, after Complainant expressed interest

in acquiring the domain name, Respondent refused to sell the domain name and

stated that he recently refused an offer for $100,000 for the domain name. If

Respondent lacked a legitimate interest in the domain name, this might, depending

on the context, be considered a veiled invitation to bid on the domain name,

thus justifying an inference of bad faith. Policy ¶ 4(b)(i). In the context

of this case, though, this evidence falls far short of constituting a bad faith

offer of sale. Because Complainant has not met its burden of showing that Respondent

lacks a legitimate interest in the domain name, the name is a business asset

whose price Respondent was free to negotiate, if that was what it was doing.

See, e.g., Etam, plc v. Alberta Hot Rods, Case No. D2000-1654

(WIPO, Jan. 31, 2001); General Machine Products Co. v. Prime Domains,

Case No. FA0001000092531 (NAF, filed Jan. 26, 2000). Moreover, Respondent’s

owner states that he expressly told Complainant’s counsel that the name was

not for sale. There is thus ample evidence in this record to support a finding

that Respondent did not register the domain name for the purpose of selling

it to Complainant.

Complainant also alleges

that Respondent exhibited bad faith under ¶ 4(b)(ii) of the Policy. That

provision declares registration to be in bad faith if it is done "in

order to prevent the owner of the trademark or service mark from reflecting

the mark in a corresponding domain name, provided that [the registrant

has] engaged in a pattern of such conduct" (emphasis added). Complainant

presents no evidence whatsoever of any pattern; thus, its allegation "on

information and belief" that Respondent violated paragraph 4(b)(ii)

appears to be frivolous. Nor do the parties appear to be competitors, id.

¶ 4(b)(iii), nor is there a scintilla of evidence that Respondent is trying

to gain commercially by causing confusion, id. ¶ 4(b)(iv).

7. Reverse Domain Name

Hijacking

Respondent has asked

the Panel to make a finding of attempted reverse domain name hijacking.

Rule 1 defines reverse domain name hijacking as "using the Policy in

bad faith to attempt to deprive a registered domain-name holder of a domain

name." See also Rule 15(e).

Although Complaints

are certified and Panels may rely on the facts stated therein, conclusory

allegations are, by themselves, inadequate because they provide no factual

support for their assertions. Rather, Complainants must allege facts to

support the assertions and, where available, should supplement these factual

assertions with affidavit and documentary evidence.

In this case, the Complaint’s

treatment of the legitimate use and bad faith elements of the Policy falls

below any acceptable standard. The Complaint offered no specifics regarding

Respondent’s website or Complainant’s communications with Respondent. The

only specific allegations in the Complaint involved Complainant’s ownership

of its mark. Given the facial deficiencies in the Complaint, the Panel called

for further submissions to determine whether Complainant’s decision to file

a Complaint was at all justifiable or whether it instead constituted an

attempt at reverse domain name hijacking.

Complainant’s affidavit,

submitted in response to the Panel’s request, reveals that Complainant may

have had some basis for suspecting that Respondent was a cybersquatter.

In its supplemental submission, Complainant revealed for the first time

that it could not find a website associated with the domain name and had

difficulty contacting Respondent during its investigations. Even if Respondent

is not responsible for these difficulties, they provided a reasonable basis

for Complainant to conclude that Respondent was not a legitimate business,

especially when Respondent’s proprietor mentioned $100,000 in a conversation

with Complainant’s representative. Without knowledge of Respondent’s past

legitimate use, Complainant could reasonably have understood this statement

as extortionate (although, if it did have that understanding, its failure

to refer to these facts in the Complaint is inexplicable). Moreover, after

receipt of Complainant’s initial letter, Respondent put up a "placeholder"

website that still did not offer any goods or services, no doubt contributing

to Complainant’s perception of cybersquatting. Thus, although the Panel

was inclined to find reverse domain name hijacking given the paucity of

proof in the Complaint, Complainant’s affidavit demonstrates that Complainant

had at least some basis to believe that Respondent violated the Policy.

Accordingly, and without

condoning the Complainant’s woefully inadequate Complaint, the Panel declines

to find that Complainant engaged in attempted reverse domain name hijacking.

8. Decision

Complainant has failed

to establish two of the three elements of the Policy: that Respondent lacks

legitimate rights or interests in the domain name <onlineresources.com>,

and that Respondent registered and is using the domain name in bad faith.

The Panel therefore denies the Complainant’s request that the domain name

be transferred from Respondent to Complainant.

David H.

Bernstein

Sole Panelist

Dated: May

15, 2001