DECISION

 

iLeads.com LLC v. Electronic Marketing Systems, Inc.

Claim Number: FA0308000187636

 

PARTIES

Complainant is iLeads.com LLC, Newport Beach, CA (“iLeads.com” or “Complainant”) represented by Amanda V. Dwight of Dwight Law Group. Respondent is Electronic Marketing Systems, Inc., Carson City, NV (“Electronic Marketing Systems,” “EMS” or “Respondent”) represented by Mark Sabatini.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aleads.com> registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 21, 2003; the Forum received a hard copy of the Complaint on August 22, 2003.

 

On August 21, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <aleads.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 August 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 16, 2003 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@aleads.com by e-mail.

 

A Response was received and determined to be complete on September 16, 2003. However, the electronic copy was received after the deadline for response.

 

Complainant submitted a timely and complete Additional Submission on September 22, 2003.

 

On September 29, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Since at least May 1997, iLeads.com has used the ILEADS.COM mark in interstate commerce in connection with its services, as outlined above.  iLeads.com is a leader in the business of providing business information to insurance, financial and mortgage companies pertaining to business opportunities via the Internet.  iLeads.com registered its domain name <ileads.com> in or about September 1997.

 

Over the past six years, iLeads.com has spent a substantial sum of money advertising and promoting its services under the ILEADS.COM mark, which has resulted in the creation of a great deal of goodwill and popularity for this mark.  iLeads.com has a very strong presence on the Internet, through its ownership and operation of a website under the domain name <ileads.com>, and through its ownership interest in several hundred websites.

 

As a result of iLeads.com's long and exclusive use of the ILEADS.COM mark, its advertising and promotional efforts and expenditures in connection with the mark, and the wide recognition achieved for the mark, the public has come to associate the ILEADS.COM mark with services originating with, emanating from, sponsored by or otherwise associated with or approved by iLeads.com. In addition, the ILEADS.COM mark also has become an extremely valuable symbol of iLeads.com with substantial commercial magnetism, and has achieved secondary meaning.

 

[a.]            EMS's Domain Name Is Confusingly Similar To iLeads.com's Registered Trademark ILEADS.COM

 

Upon information and belief, on or about April 2000, Respondent registered the domain name <aleads.com>.  This domain name is nearly identical or confusingly similar to the mark ILEADS.COM.  Indeed, EMS's domain name is nearly identical in sound, sight, and connotation to iLeads.com's mark.  The only difference between the disputed domain name and the iLeads.com's registered ILEADS.COM mark is the letter "a" in place of the letter "i." 

 

EMS's services, provided at their <aleads.com> website, are identical to iLeads.com's services.  EMS also provides information pertaining to business opportunities in the mortgage and insurance industry, via the Internet.  Both parties use the Internet as their sole channel of trade.

 

Significantly, EMS's use of their confusingly similar domain name has created confusion in the marketplace.

 

[b.]            EMS Has No Rights or Legitimate Interests in the Domain Name <aleads.com>

 

iLeads.com has established rights in the ILEADS.COM mark by using this trade name and trademark in commerce since at least as early as 1997.  In addition, iLeads.com's federal trademark registration serves as prima facie evidence that iLeads.com is the owner of the ILEADS.COM mark and that this mark is valid and entitled to protection.

 

EMS is not a licensee of iLeads.com.  iLeads.com has never authorized or licensed EMS to use its trade name or trademark in any manner.  EMS is not commonly known by the domain name.  Moreover, iLeads.com's rights in its trademark, trade name, and domain names precede EMS's registration of the name <aleads.com>, which was registered in April 2000, over three years after iLeads.com's use of its mark.

 

Significantly, EMS is not making a legitimate, noncommercial, or fair use of the domain name <aleads.com>.  As discussed in detail below, EMS's sole intent in adopting this confusingly similar name is to divert consumers to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website and services.  These actions have been taken for the purpose of commercial gain at the expense of iLeads.com and its goodwill in and to its trade name and trademark.

 

[c.]            EMS Registered and is Using The <aleads.com> Domain Name in Bad Faith

 

EMS's bad faith is further confirmed by their infringement of iLeads.com's copyrighted materials.  In creating its website, EMS wholesale copied significant portions of iLeads.com's copyrighted website.  Indeed, EMS not only copied iLeads.com's text, they misappropriated iLeads.com's style and color too.  Because of the similarity between Complainant's trademark and Respondent's domain name, it is evident that consumers searching for iLeads.com's services could end up at EMS's website.  The content at EMS's website, copied from iLeads.com's site, further blurs the line of affiliation with Complainant.

 

After learning of EMS's registration of the domain name, iLeads.com telephoned and wrote to EMS advising it that iLeads.com was the owner of the name and mark, and that EMS's registration and use of the domain name <aleads.com> constituted a violation of iLeads.com's right in the ILEADS.COM mark.  Complainant requested that EMS transfer the domain name to iLeads.com.  During the telephone conversation, EMS's representative told iLeads.com's representative that they too had their "sites ripped of[f] before" and that iLeads.com "should learn to live with it."   EMS never responded to iLeads.com's letter.

 

Given the similarity in the names, the similarity of the services, the wholesale copying of iLeads.com's website, and EMS's own admission of copying, it is clear EMS registered and is using the domain name at issue to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with iLeads.com's mark as to the source, sponsorship, affiliation or endorsement of EMS's website and/or service.  This use is unauthorized and constitutes bad faith use and registration under Policy ¶ 4(b)(iv). 

 

B. Respondent

General Information

EMS owns and operates several websites on the Internet that involve the marketing of websites and has done so since 1995.

 

During this time EMS has created email databases of consumers that have opted in to receive information and promotional material related to investment opportunities, insurance rate information, mortgage rate information, etc.

 

This database is how EMS generates Internet traffic to its proprietary websites.

 

The primary website that EMS operates under is <floodgate.com>, which basically pioneered email marketing in the infancy by being the first site to offer businesses the ability to create and build “opt in” email addresses.

 

In 1996, Floodgate became a primary site for businesses to market their goods and services over the Internet and was ranked #1 in many search engines. Some of the clients that used Floodgate were mortgage companies that wanted to generate leads.

 

Lead Information

The first mortgage company to approach Floodgate to do an email marketing was a company called Allied Mortgage. In August 1996, Allied Mortgage contacted Electronic Marketing Systems through the Floodgate website and inquired about an email marketing campaign to generate leads, a test campaign was done and was proven to be a success and a contract was made to generate leads on a cost-per-lead basis.

 

As business began to grow for Mortgage, the demand also began to grow for generating high-quality mortgage leads. A website was created in 1997 specifically for Mortgage Companies to visit and learn about Internet leads provided by Electronic Marketing Systems.

 

The domain name eventually selected to market mortgage leads that was available through <register.com> was <aleads.com> and that name was selected for the theme of having the very finest Internet leads.

 

Another site owned by EMS is <a1webservice.com>, which creates and hosts websites for mortgage companies.

 

Notice to <aleads.com>

In October 2000, Drew Warmington contacted Electronic Marketing Systems and accused EMS of copying the <ileads.com> website and demanded to have whatever was being copied removed.

 

Mark Sabatini, the owner of Electronic Marketing Systems, contacted Carol Nunes the webmaster for EMS website hosting and development division and asked Carol if any of iLeads.com’s website was being copied.

 

After inspecting the site Carol Nunes confirmed that there was nothing on the <aleads.com> website that was copying iLeads.com, this information was relayed back to Drew Warmington.

 

Mr. Warmington was then asked to please provide specific information as to what was being copied so it could be properly investigated and Mr. Warmington provided no information except that one of his demands was that EMS release the domain name to iLeads.com for nothing.

 

Mr. Warmington was then advised that if he was interested in purchasing the domain name that all reasonable offers would be considered.

 

Mark Sabatini explained candidly that there were other people that are selling mortgage leads on the Internet and or copying the concept of selling mortgage leads to mortgage companies and that Mr. Warmington's idea of selling leads was not unique or any different than any other company selling Internet leads to financial companies.

 

Registering

On October 3, 2000 Drew Warmington registered the domain name <aleads.net> despite having no affiliation at all with <aleads.com>.

 

Every Letter before “leads.com” does not belong to Drew Warmington.

 

A look up done at <register.com> indicates that every letter before “lead.com” is usually always registered to a lead company and or reseller of domain names.

 

 

Facts

Mr. Warmington seems to feel that people are mistakenly finding the <aleads.com> website instead of <ileads.com>, which is not true.

 

1.            There has never been a customer that <aleads.com> has acquired that feels they are doing business with iLeads.com nor has there been any proof or affidavits furnished to support any such theory.

 

2.            There has never been any indication by Drew Warmington of a case or incident or any person or company being misdirected to the <aleads.com> website during the last five years of Internet business.

 

3.            The <aleads.com> website and <ileads.com> website are completely different and are in no way alike.

 

4.            A search for Internet leads on Google conducted on September 13, 2003 revealed 640,000 matches: 640,000 websites/companies all selling Internet leads.

 

5.            “iLeads” clearly stands for “Internet leads” and it is highly unlikely that someone is going to replace the "I" with an "A" when typing the domain name <ileads.com>.

 

6.            It is Respondent’s belief that Mr. Warmington is attempting to steal EMS’s domain name.

 

Material Facts

Upon close review of the <ileads.com> website there is no copyright or trademark infringement made by the <aleads.com> website. The mere thought of there being any lost business by <ileads.com> to <aleads.com> is absurd.

 

There is no business that comes to the <aleads.com> website from search engines or people that mistype the <ileads.com> website by mistakenly typing "a" instead of "i."

 

The only business the <aleads.com> website does is from its existing client database and or from direct mail/email marketing to mortgage companies.

 

The main purpose of the website is to provide an Internet presence and distribute leads to subscribers from the <aleads.com> domain.

 

There is no factual information that there is any loss of business between the two websites, especially since there are over 600,000 sites now selling leads.

 

C. Additional Submissions

Complainant submitted an Additional Submission on September 22, 2003.  This was particularly helpful in pointing out phrases and words Respondent copied from Complainant’s website.

 

FINDINGS

While Complainant proved the domain name was registered and being used in bad faith, it failed to prove:

 

the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

the Respondent has no rights or legitimate interests in respect of the domain name.

 

DISCUSSION

The Forum received a timely hard copy of the Response. However, the electronic version was received after the deadline for the Response. Exercising its discretion, the Panel has decided to consider the response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the Response is solely in the discretion of the Panelist); see also Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a response which was one day late, and received before a Panelist was appointed and any consideration made).  The delay in this case was slight and one copy of the Response was timely.  As a general rule, a Panelist should decide a case on the merits as long as the delay has not worked any prejudice.  This delay has not worked any prejudice.

 

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:

 

the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

the Respondent has no rights or legitimate interests in respect of the domain name; and

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

 

Identical and/or Confusingly Similar

Respondent registered the <aleads.com> domain name on April 23, 2000.  Complainant has failed to establish any rights in the mark prior to Respondent’s registration of the domain name. See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO March 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (noting that as Respondent’s registration of the <razorbox.com> domain name predated Complainant’s alleged rights (Respondent registered the disputed domain name more than two years prior to Complainant’s stated first use in commerce).  Complainant did not have standing to bring a claim under the UDRP).

 

The parties have spent much time discussing whether or not the initial letter in the domain names (which are otherwise the same) sufficiently differentiates them.  This Panel holds that it does, especially since the letter “a” and the letter “i” are not very close on the keyboard and they really don’t look very much alike.  The letter “a” is not commonly substituted for the letter “i” when typing.  For the reasons discussed below, it is clear to this Panelist Respondent wanted to compete with Complainant and used Complainant’s intellectual property to do so (the Complainant’s trademark and copyrighted HTML code).  However, this does not automatically mean the domain names in question are confusingly similar.

 

Rights or Legitimate Interests

Complainant and Respondent are in the business of selling mortgage leads.  Respondent’s use of the <aleads.com> domain name to sell leads over the Internet indicates a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), which demonstrates Respondent’s rights to and legitimate interests in the disputed domain name for purposes of Policy ¶ 4(a)(ii). See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO March 19, 2002) (finding that Respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name); see also Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (“By September 1999, when first approached by the Complainant, the Respondent or its predecessors had used the <bankinternet.com> website for almost 4 years, thus demonstrating ‘a bona fide offering of goods and services’”).

 

Respondent uses the term “leads” in the generic sense to refer to the sale of leads over the Internet.  Respondent’s use of the generic term “leads” establishes rights to and legitimate interests in the <aleads.com> domain name under Policy ¶ 4(a)(ii). See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that 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”); see also CRS Tech. Corp. v. CondeNet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest").

 

Registration and Use in Bad Faith

Respondent copied significant portions of Complainant’s website, including Complainant’s trademark and certain phrases.  Respondent admitted this in a telephone conversation with Complainant (Respondent said Complainant should “learn to live with their website being ripped off” or words to that effect).  In its Additional Submission, Complainant produced evidence Respondent copied business forms from Complainant’s website because the <aleads.com> website contained forms that read, “What is the best time for an iLeads.com representative to call?”  To this Panel, there is no doubt Respondent improperly used Complainant’s registered trademark and (poorly) copied HTML code from Complainant’s website.  Respondent did all of this with the intention of competing with Respondent.

 

Respondent’s copying significant portions of Complainant’s website and trademark to compete in the lead-selling business with Complainant establishes Respondent’s bad faith registration and use of the <aleads.com> domain name pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).

 

Respondent’s operation of a commercial website at the <aleads.com> domain name demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

 

DECISION

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

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: August 20, 2003

 

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