Infovista fails in bid for 'infovistausa.com'
In Infovista SA v Infovista Technology LLC, World Intellectual Property Organization (WIPO) panellist Johan Sjöbeck has refused to order the transfer of 'infovistausa.com' to the complainant - the owner of the INFOVISTA mark. Although the registrant did not file a response, Sjöbeck held that the complainant had failed to demonstrate that the domain name had been registered and used in bad faith.
Infovista, an international supplier of information technology services, registered the trademark INFOVISTA in the United States in 1997 and in the European Union in 2000. Infovista Technology LLC (Technology) registered 'infovistausa.com' in August 2000, well after Infovista's first use and registration. After failing to receive a reply from numerous cease and desist letters, Infovista filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP). It argued, among other things, that the disputed domain name infringed its INFOVISTA mark, and had been registered and used in bad faith because Technology must have known of Infovista and its 'infovista.com' domain name when it registered 'infovistausa.com'. As further evidence of bad faith, Infovista contended that a press release link to it on Technology's website wrongfully suggested an affiliation between the organizations. Technology did not respond to the complaint.
Sjöbeck denied the complaint on the grounds that Infovista had failed to meet all three requirements for transfer in Paragraph 4 of the UDRP. He acknowledged that the domain name was confusingly similar to the INFOVISTA mark, noting that adding a generic term (such as 'USA') to a domain name does not distinguish it from a trademark so as to eliminate confusion. However, Sjöbeck was not convinced that Technology did not have legitimate interests in the domain name. He reasoned that Technology had established its business under the name Infovista Technology LLC and, shortly thereafter, had obtained the domain name. This suggested that the domain name was arguably obtained for a business purpose, notwithstanding any potential trademark infringement issues with respect to Technology's corporate name and Infovista's trademark.
Sjöbeck also rejected Infovista's arguments that Technology had acted in bad faith. He held that (i) Technology did not necessarily know about Infovista when it registered the disputed domain name, and (ii) the fact that it had a press release linked to Infovista on its website was not proof that Technology had acted in bad faith.
Keith W Medansky and Micah R Onixt, Piper Rudnick LLP, Chicago
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