Impact Fulfillment Services LLC operates from the domain impactfs.com and filed a UDRP against the registrant of impactifs.com.
That additional “i” isn’t there for show, as the Respondent explained:
Respondent denies the allegations of targeting Complainant and says further that Respondent has registered multiple, at least 12, domain names ending in “ifs” which refers to “international financial services”.
Respondent claims that his industry is completely different from the fulfillment services provided by Complainant. Respondent contends that it currently runs one website containing the “ifs” suffix in its domain names and has others for related business ventures. These business ventures are in finance, and a different industry than Complainant.
No ifs and buts, therefore the Forum (NAF) panelist ordered the domain impactifs.com to remain with the Respondent.
The domain transfer was denied.
Impact Fulfillment Services LLC v. Sri Atluri / eventif Inc
Claim Number: FA2109001964379
PARTIES
Complainant is Impact Fulfillment Services LLC (“Complainant”), represented by Brian Ullrich of Impact Fulfillment Services LLC, North Carolina, USA. Respondent is Sri Atluri / eventif Inc (“Respondent”), represented by T.C. Johnston, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <impactifs.com>, (“Domain Name”) registered with GoDaddy.com, LLC.
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.
Clive Lincoln Elliott Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on September 20, 2021; the Forum received payment on September 20, 2021.
On September 21, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the Domain Name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 27, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@impactifs.com. Also on September 27, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 14, 2021.
On October 19, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Clive Lincoln Elliott Q.C as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a limited liability company, formed on January 28, 2016, and offering contract packaging, warehousing and logistics services. It is located in Burlington, North Carolina, United States and operates its business from the website <impactfs.com>.
According to the publicly available WhoIs the Domain Name was registered on December 7, 2017 and as at the date of this Complaint the Domain Name was parked, and Complainant contends, is listed as being for sale. Complainant also contends that the social media account attached to the Domain Name reflects Complainant’s office location and email addresses.
Complainant states that the name of the Domain is a play on Complainant’s registered and incorporated name and is confusingly similar to Complainant’s domain name at <impactfs.com>.
Complainant contends that the Domain Name Twitter posted one tweet in 2015, wherein it stated it is based in Burlington North Carolina. The one and only posting from this account references a job posting that refers potential candidates to Complainant’s internal Human Resources Department at he@impactfs.com.
In terms of bad faith Respondent asserts that the Domain Name is parked, and no actual web site is listed as being for sale.
B. Respondent
Respondent denies the allegations of targeting Complainant and says further that Respondent has registered multiple, at least 12, domain names ending in “ifs” which refers to “international financial services”, including:
· eventIFS (.com, .net, .org, and .info). The <eventifs.com> is a live website for event based trading;
· InvestIFS (.com, .net, .org, and .info);
· ImpactIFS (.com, .net, .org, and .info);
· Eventbasedtrading.com (redirects to eventifs.com).
Respondent claims that his industry is completely different from the fulfillment services provided by Complainant.
Respondent contends that it currently runs one website containing the “ifs” suffix in its domain names and has others for related business ventures. These business ventures are in finance, and a different industry than Complainant.
Respondent points out that it registered the Domain Name in 2017, which is nearly four years ago and in that time Complainant has made no attempts to contact Respondent or take any other action regarding the Domain Name.
Respondent denies the allegation that the Domain Name has a for sale parked page and affirms that he does not intend to sell the Domain Name.
Respondent also denies the allegations that he registered the Domain Name in bad faith as it has legitimate reasons to register multiple domains with the abbreviation “ifs” in them as well as operating in a different geographical location from Complainant.
Additionally, Respondent asserts it has never heard of Complainant’s company until this action and that while it is not entirely clear what Complainant does, it is not financial services.
FINDINGS
For the reasons set out below the Complaint is denied.
DISCUSSION
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 asserts rights in the IMPACT FULFILLMENT SERVICES, LLC mark (Complainant’s Mark) through its registration with the North Carolina Secretary of State. Previous Panels have found that the registration of a mark with a state agency or authority is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). The Panel finds accordingly. Having said that, Complainant does not allege or provide any evidence of other rights in Complainant’s Mark, for example, by virtue of use of the mark in the course of trade or the fact that it has established a reputation or goodwill in Complainant’s Mark.
Respondent submits that the Domain Name is not confusingly similar to Complainant’s Mark since it includes the additional “I” within the domain. Further, Respondent contends that he has registered multiple domain names, all of which include “IFS”, which according to Respondent, is an abbreviation or acronym for “international financial services”, the area in which Respondent is involved.
Notwithstanding Respondent’s argument the Panel finds that the Domain Name, while not identical, is confusingly similar to Complainant’s Mark, but (for reasons which will become apparent in the paragraphs that follow), only by a narrow margin.
Accordingly, the first element of the Policy is satisfied.Rights or Legitimate Interests
Respondent claims that he registered the Domain Name in connection with ongoing business ventures in the area of “international financial services”. Further, Respondent claims that the Domain Name is used in a completely unrelated business area. The use of a domain name entirely unrelated to a trademark holder’s business may still qualify as a bona fide offer of goods or services under Policy ¶ 4(c)(i). See VIP ME ENTERPRISES LLC LIMITED LIABILITY COMPANY NEVADA v. frank ma / Vipshop (US) Inc., FA 1702016 (Forum Dec. 20, 2016) (“Respondent contends that the Domain Name is used for a legitimate offering of on-line retail services featuring women’s fashion apparel which is unrelated to Complainant’s use of the VIPME mark… On that basis, the Panel considers that Respondent has sufficiently demonstrated rights or legitimate interests in the Domain Name through its use.”).
Respondent provides receipts for its purchases of over a dozen domain names involving the acronym “IFS”. This suggests that Respondent is not targeting Complainant but regards the “IFS” acronym as suitable for his business. In addition, Respondent’s assertion that “IFS” is an acronym for “international financial services” is plausible.
Finally, Respondent contends that while he registered the Domain Name almost four years ago, prior to the Complaint he was never contacted by Complainant. Respondent relies on the doctrine of laches i.e. delay, to support his defence to the allegations made by Complainant. The Panel infers from the delay that Respondent’s activities, including his registration of the Domain Name were not of sufficient concern, to compel Complainant to act sooner and this circumstance is taken into account, in the Panel finding that the second ground is not made out.
Accordingly, the Panel finds Respondent has rights in the Domain Name under Policy ¶ 4(c)(i).
Registration and Use in Bad Faith
Complainant makes a curious argument in support of its claim that the Domain Name was registered and is being used in bad faith. It argues that the Domain Name is parked, and no actual web site is listed as being for sale. Respondent in turn denies that the Domain Name has a for sale parked page and states that he does not intend to sell the Domain Name.
Complainant’s contention that Respondent offered the Domain Name for sale is not supported by evidence. Previous Panels have found that failure to provide evidence of bad faith precludes a finding of bad faith under the Policy ¶ 4(b)(i). See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith). In the absence of evidence to support Complainant’s argument the Panel adopts the same view in the present case.
Further, Respondent asserts that prior to the Complaint he had never heard of Complainant. In addition, he contends that the parties are not operating in the same business area. In the absence of any real evidence of the nature and extent of Complainant’s business, or its reputation there is no evidential basis to refute Respondent’s argument. Nor is there any reliable basis to conclude that Respondent acted in bad faith in registering and using the Domain Name.
For these reasons the Panel finds that Respondent did not register or use the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii).DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <impactifs.com> domain name REMAIN WITH Respondent.
Clive Lincoln Elliott Q.C, Panelist
Dated: November 4, 2021
