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and Mediation Center
Intuit Inc. v. Nett Corp.
Case No. D2005-1206
1. The Parties
The Complainant is Intuit Inc., Mountain View, California, United States of America, represented by Carr & Ferrell, LLP., United States of America.
The Respondent is Nett Corp., Tallahassee, Florida, United States of America,
represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar
The disputed domain name <masterbuilder.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2005. On November 22, 2005, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 1, 2005, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced December 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response December 27, 2005. The Respondent requested a 10 day extension to the Response deadline, with Complainant’s consent. The Center granted the Extension Request and the new deadline was set for January 6, 2006, The Response was filed with the Center January 6, 2006.
The Center appointed Lawrence K. Nodine, Alan L. Limbury and David E. Sorkin as panelists in this matter on February 3, 2006. The Panel finds that it was properly constituted. Each member of 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.
The Panel has reviewed Complainant’s “Reply Brief” and the
supporting attachments. Under paragraph 12 of the Rules, no party has the right
to insist upon the admissibility of additional evidence: SembCorp Industries
Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
It is appropriate to consider the circumstances of each case before deciding
whether to admit unsolicited additional submissions: Toyota Jidosha Kabushiki
Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO
Case No. D2000-0802. Because the Reply Brief does not present evidence that
was unavailable to the Complainant at the time of its initial submission, or
respond to arguments of the Respondent that the Complainant could not reasonably
have anticipated: see Goldline International, Inc. v. Gold Line, WIPO
Case No. D2000-1151, the Panel rules that Complainant’s additional
evidence and arguments are not admissible.
4. Factual Background
Complainant states the following:
In 2001 Complainant acquired OMware, Inc., the producer of MASTER BUILDER construction management software. OMware first used the MASTER BUILDER trademark in 1982.
OMware maintained a website for “MASTER BUILDER” at “www.themasterbuilder.com” which it registered in January 1997. Complainant maintains an Internet presence at “www.masterbuilder.intuit.com” and “www.themasterbuilder.com”.
Respondent registered <masterbuilder.com> in November 1999.
Complainant has been a leading provider of financial software and web-based services for consumers, small businesses and accounting professionals for more than 20 years. In fiscal year 2004, Intuit posted annual revenues of nearly $1.9 billion and the company employs nearly 7,000 people in offices in the United States of America, Canada and the United Kingdom. Approximately 5000 contractors and subcontractors of all trades now use Complainant’s MASTER BUILDER software and services throughout the United States of America and Puerto Rico for construction estimates, project management and accounting and analysis.
Complainant owns the following United States trademark registrations:
MASTER BUILDER, Registration No. 2852475, registered June 15, 2004; and INTUIT MASTER BUILDER, Registration No. 2852474, registered June 15, 2004.
Respondent states the following:
Respondent has registered many common descriptive term domain names in addition to the disputed domain name such as: <camping.com>, <carspeakers.com>, <trumpets.com>, <xylophone.com>, <anniversaries.com>, <tricycles.com>.
Respondent registered its domain name several years
prior to the date of Complainant’s United States application for the MASTER
BUILDER trademark. Respondent registered the Domain Name at issue on
November 11, 1999, when it expired and became available for anyone to register.
5. Parties’ Contentions
With respect to paragraph 4(a)(i) of the Policy, Complainant contends that:
The second level domain portion of Respondent’s domain name <masterbuilder.com> is identical, or confusingly similar, to Complainant’s registered trademark MASTER BUILDER and the top level domain, “.com” “does not detract from the overall impression of the dominant portion of the domain”.
With respect to paragraph 4(a)(ii) of the Policy, Complainant contends that:
(1) the domain name does not reflect the Respondent’s company name as registered with the domain registrar, the Florida Secretary of State, or as identified on any website associated with the domain name;
(2) the domain name does not reflect the Respondent’s personal name as registered with the domain registrar or as identified on any website associated with the domain name;
(3) the domain name does not reflect any present trademark or service mark of the Respondent for MASTER BUILDER;
(4) the Respondent has not filed any intent-to-use trademark applications for the domain or the words “master builder” in its country of residence (the United States of America);
(5) the manner of use of the domain name cannot be characterized as a noncommercial fair use; and
(6) there is no business relationship between Complainant and Respondent.
(7) the Respondent has no legitimate interest in using the terms “master” and “builder” in their descriptive sense because the Respondent is primarily using the site to link to information about the Complainant’s trademark product, the MASTER BUILDER software by Intuit.
With respect to paragraph 4(a)(iii) of the Policy, Complainant contends:
Registration in Bad Faith
Bad faith can be inferred when the registration involves a well-known mark. Complainant’s mark is well known because of its more than 20 years of use for a well-known product. Further, Respondent offers links to vendors offering Complainant’s well-known MASTER BUILDER product for sale.
The Domain Name at issue was registered on November 9, 1999, just three months after OMware’s announcement of its initial public offering of shares to California residents. Hence Respondent must have been aware of Complainant’s mark.
Use in Bad Faith
Respondent is using the <masterbuilder.com> Domain Name in connection with its website displaying apparently paid-for advertising and “sponsored links” from Overture.com.
Respondent has intentionally attempted to attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Respondent’s registration and use of the <masterbuilder.com> Domain Name reveal an intention to divert Internet users seeking to purchase Complainant’s MASTER BUILDER product to Respondent’s website.
The selection of <masterbuilder.com> was in order to capitalize on the recognition of the Intuit MASTER BUILDER trademark.
The “commercial gain” described in paragraph 4(b)(iv) of the Policy, does not require proof that Respondent received actual monetary gain, as Respondent’s use of the Domain Name to display advertising is sufficient.
Internet users are likely to be confused as to the source, sponsorship, affiliation or endorsement of <masterbuilder.com>. Users would logically expect to find content concerning the MASTER BUILDER software at “www.masterbuilder.com”.
The initial confusion experienced by internet users when visitors to the “www.masterbuilder.com” website expecting to find content concerning Complainant’s software product, instead find links related to the MASTER BUILDER software but no link to Complainant’s website or any explanation of the connection between Respondent and Intuit, satisfies the legal requirements for likelihood of confusion under a theory of “initial interest confusion” under United States law.
Respondent is well-known for registering the marks of others as domain names and has established a “pattern” of such conduct.
With respect to paragraph 4(a)(i) of the Policy, Respondent contends that:
Complainant’s trademark was registered after Respondent registered the Disputed Domain Name <masterbuilder.com> on November 11, 1999. Complainant filed an application for its MASTER BUILDER trademark on February 8, 2002. The mark was not registered until June 15, 2004.
With respect to paragraph 4(a)(ii) of the Policy, Respondent contends that:
The Disputed Domain Name incorporates the mere common descriptive term “master builder”, which is a descriptive term meaning “expert” builder. A Google search for this common term yielded over 500,000 third party web pages containing the term, and there are also 10 third party U.S. trademark registrations and pending marks that incorporate this term. Complainant does not have exclusive rights to this common term.
Respondent’s legitimate interest is bolstered by the fact that it uses
the Disputed Domain Name to post advertising links, which relate to the meaning
of “master builder”. The related links include: building construction,
construction tools, building material, building contractor. Respondent relies
on HP Hood LLC v. Hood.com, NAF No. 313566,i
“[w]here the domain name incorporates a common word, it is beyond debate
that the posting of related advertising links constitute use of the domain name
for the bona fide offering of goods and services”.
Respondent’s links in its “www.masterbuilder.com” website are auto-generated pursuant to Respondent’s agreement with Yahoo! Search Marketing. The links are the same sponsored links that appear in response to a Yahoo! search for the term “master builder”.
Respondent has no control over what terms advertisers
bid on at Yahoo and what terms appear on its website. Accordingly, the sponsored
links which relate to Complainant’s product do not render Respondent’s
use of the Disputed Domain Name illegitimate. See Admiral Insurance Services
v. Dicker, WIPO Case No. D2005-0241 (“the Panel
accepts that the terms under which Google makes its Adsense advertisements available
do not permit the Respondent to control them . . .”).ii
See also Experimental Aircraft Association (EAA) v. EAA.COM, NAF
Case No. 206309 (“brief appearance of aviation links on respondent’s
websites was automatically provided by a pay-per-click search engine provider…”).iii
With respect to paragraph 4(a)(iii) of the Policy, Respondent contends that:
Respondent had no knowledge of Complainant’s alleged mark when it registered the Disputed Domain Name, nor is there any evidence to support such a conclusion.
Complainant’s trademark was registered several years after Respondent
registered the Disputed Domain Name.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a).
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the MASTER BUILDER mark. Complainant
owns a United States federal registration for MASTER BUILDER. Although this
mark was registered after Respondent registered the domain name, that does not
bar Complainant from relying on it to show rights sufficient to satisfy section 4(a)(i)
of the Policy. Recent cases have ruled that, because paragraph 4(a)(i) of the
Policy uses the present tense, it is sufficient that Complainant have trademark
rights at the time the complaint is filed. Valve Corp. v. ValveNET, Inc.,
WIPO Case No. D2005-0038, (“paragraph 4(a)(i)
does not expressly require that a complainant demonstrate that it had rights
in a trademark or service mark prior to the respondent’s registration
of the Disputed Domain Name. Instead, the Policy refers to the complainant’s
ownership of trademark rights in the present tense.”).
The Panel finds that that the Domain Name <masterbuilder.com> is confusingly
similar to the registered trademark in which Complainant has rights. The dominant
portion of Complainant’s mark and of the disputed Domain Name is “masterbuilder”
The Disputed Domain Name differs inconsequentially from Complainant’s
registered word mark in that it consists of two words rather than one and contains
the non descriptive gTLD domain name suffix “.com”. Busy Body,
Inc. v. Fitness Outlet Inc., WIPO Case
No. D2000-0127 (“the addition of the generic top-level domain (gTLD)
name ‘.com’ is … without legal significance since use of a
gTLD is required of domain name registrants”). The Panel finds that the
first element of the Policy has been established.
B. Rights or Legitimate Interests
Because the Panel finds that Complainant has not met its burden to prove bad
faith registration and use, it makes no finding on this issue.
C. Registered and Used in Bad Faith
Whether a domain name was registered and is being used in bad faith for purposes of the Policy may be determined by evaluating four factors set forth (non-exhaustively) in the Policy: (i) circumstances indicating that the registrant 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Complainant’s trademark was registered after Respondent registered the Disputed Domain Name. <masterbuilder.com> was registered on November 11, 1999. Complainant filed an application for its MASTER BUILDER trademark on February 8, 2002, and the mark was registered on June 15, 2004. Although Complainant had common law rights in the mark in 1999, there is no evidence that Respondent knew of Complainant’s common law use or rights at that time. The evidence is not sufficient to support a finding that Complainant’s mark was so widely known that it is likely that Respondent knew of Complainant’s rights. The prior announcement of the planned IPO is insufficient to show that Respondent (in Florida) knew of Complainant’s plans (in California) before Respondent registered the domain name. Moreover, Respondent’s initial use of the domain name in an unrelated manner supports a finding that the domain name was registered neither for the purpose of exploiting Complainant’s good will nor with Complainant in mind.
The earliest evidence that could possibly amount to
bad faith use is so long after registration that it cannot outweigh the evidence
tending to show good faith registration: Passion Group Inc. v. Usearch, Inc.,
eResolution case AF-0250 [<jobpostings.com>], followed in Viz Communications,
Inc., v. Redsun dba www.animerica.com and David Penava, WIPO
Case No. D2000-0905, [<animerica.com>]. See also Yoomedia Dating
Limited v. Cynthia Newcomer / Dateline BBS, WIPO
Case No. D2004-1085.
In view of the above findings relative to registration, it is not necessary to rule on whether the Domain Name is being used in bad faith.
The Complaint is denied under the Policy due to lack
of evidence of bad faith registration.
For all the foregoing reasons, the Complaint is denied.
Alan L. Limbury
David E. Sorkin
Dated: February 20, 2006
iHP Hood LLC v. Hood.com,
NAF No. 313566
iiAdmiral Insurance Services
v. Dicker, WIPO Case No. D2005-0241
iii Experimental Aircraft
Association (EAA) v. EAA.COM, NAF Case No. 206309