Polycom, Inc. v. Telcom & Data Inc
Claim Number: FA0902001245498
PARTIES
Complainant is Polycom, Inc. (“Complainant”), represented by Gretchen McCort Hoffmann, of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., Texas, USA. Respondent is Telcom & Data Inc (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <polycom-products.com>, registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nelson A. Diaz as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 2, 2009.
On February 2, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <polycom-products.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 February 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 24, 2009 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@polycom-products.com by e-mail.
A timely Response was received and determined to be complete on February 24, 2009.
On March 2, 2009, pursuant
to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson
A. Diaz as Panelist.
An additional submission
in reply to respondent’s response was received from complainant on March 3,
2009 in accordance with the uniform domain form dispute resolution policy
supplemental Rule 7 was timely.
An additional submission
in reply to complainant’s response was file on March 4, 2009 in accordance with
the uniform domain name dispute resolution policy supplement rule 7 was timely.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant’s
trademark on which this Complaint is based is the mark POLYCOM. The goods offered under Complainant’s mark
are tele-presence, video, and voice equipment, applications, and services. As
described in further detail below, Complainant’s mark POLYCOM has been used since at least as early as 1992
and has been registered with the United States Patent and Trademark Office since at least as early as 1993, at
least eight years before Respondent registered the disputed domain name.
Since at least as
early as 1992, Complainant has offered quality tele-presence, video, and voice
equipment, applications, and services under the POLYCOM mark (the “POLYCOM
Mark”).
Complainant has
spent millions of dollars advertising and promoting its goods and services
under the POLYCOM Mark around
the world. As a result of such efforts, and as a result of the long use by
Complainant of the POLYCOM Mark,
said mark is recognized as a designation that identifies and distinguishes the
quality products and services offered by Complainant. Moreover, Complainant has developed enormous
goodwill in the POLYCOM Mark for its
products and services.
Consistent with its long
use of its POLYCOM Mark, Complainant has obtained numerous trademark
registrations for the POLYCOM Mark around the world, including, but not limited
to, the following U.S. registrations:
MARK |
Reg. No. |
Reg. Date |
|
POLYCOM |
1,783,295 |
7/20/1993 |
|
POLYCOM & Design |
1,784,786 |
7/27/1993 |
|
POLYCOM & Design |
1,912,272 |
8/15/1995 |
|
CLARITY BY POLYCOM |
2,457,746 |
6/5/2001 |
|
POLYCOM WEBOFFICE |
2,691,003 |
2/25/2003 |
|
POLYCOM |
3,020,685 |
11/29/2005 |
|
POLYCOMONEDIAL |
3,163,297 |
10/24/2006 |
Complainant’s earliest U.S. registrations for the marks POLYCOM and POLYCOM and Design for goods all issued in the early to mid 1990’s (the “1990’s Registrations”), several years before Respondent registered the Disputed Domain Name.
In addition, Complainant is the owner of the domain name polycom.com as well as the following domain names containing the POLYCOM Mark:
|
claritybypolycom.info |
polycom.co.il |
polycom.com.hk |
polycom.hu |
polycomdemo.com |
|
planetpolycom.com |
polycom.co.in |
polycom.com.hr |
polycom.ie |
polycomdeutschland.de |
|
polycom.ae |
polycom.co.it |
polycom.com.lv |
polycom.info |
polycomkorea.com |
|
polycom.am |
polycom.co.jp |
polycom.com.mk |
polycom.li |
polycomkorea.net |
|
polycom.asia |
polycom.co.kr |
polycom.com.pe |
polycom.lt |
polycomnederland.nl |
|
polycom.at |
polycom.co.uk |
polycom.com.pk |
polycom.md |
polycomoffice.com |
|
polycom.ba |
polycom.co.ve |
polycom.com.pl |
polycom.mobi |
polycomweboffice.com |
|
polycom.be |
polycom.co.za |
polycom.com.pt |
polycom.org.uk |
polycomwebofficealpha.com |
|
polycom.bg |
polycom.com |
polycom.com.ro |
polycom.ph |
polycomwebofficebeta.com |
|
polycom.bs |
polycom.com.ar |
polycom.com.sg |
polycom.pl |
|
|
polycom.ca |
polycom.com.au |
polycom.dk |
polycom.pt |
|
|
polycom.cc |
polycom.com.co |
polycom.ec |
polycom.us |
|
|
polycom.cl |
polycom.com.ec |
polycom.fi |
polycomasia.com |
|
|
polycom.co.at |
polycom.com.es |
polycom.fr |
polycomclarity.biz |
|
|
polycom.co.hu |
polycom.com.gr |
polycom.hk |
polycomconnect.com |
|
The disputed domain name <polycom-products.com> is confusingly similar to Complainant’s POLYCOM Mark. Respondent’s domain name fully incorporates Complainant’s mark and deviates only with the addition of the generic term “products.” This addition to Complainant’s mark does not distinguish the domain name pursuant to Policy ¶ 4(a)(i).
Respondent has no
rights or legitimate interests in the domain name <polycom-products.com>. See
ICANN Policy at ¶ 4(a)(ii).
Respondent
registered the disputed domain name no earlier than October 1, 2001. Respondent has not
otherwise used the POLYCOM mark other than in reference to Complainant's goods and
therefore has not established prior rights.
Respondent is not in any way affiliated with Complainant and
has not been granted a license or other permission by Complainant to use
Complainant's POLYCOM Mark in any form.
Respondent’s use of the <polycom-products.com> domain name does not represent a bona fide offering of goods or services,
nor a legitimate noncommercial or fair use, because Respondent is using the
disputed domain name to sell Complainant’s goods despite the fact that
Respondent is not affiliated with or authorized by Complainant.
Respondent registered and
is using the <polycom-products.com> domain name in bad faith. See
id. at ¶ 4(a)(iii).
Complainant’s 1990’s Registrations issued several years
before Respondent registered the domain name and thus provided Respondent with
constructive notice of Complainant’s POLYCOM Mark. Furthermore, Respondent was
actually aware of Complainant’s rights in its
POLYCOM Mark, as Respondent has been selling Complainant’s products on its website since at least as early as November
2001 and is currently doing so. Moreover, Complainant’s POLYCOM Marks are
extensively advertised and well-known.
Respondent’s actual and constructive knowledge of Complainant's POLYCOM Marks
indicate bad faith.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s Website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s Website, and to divert users from Complainant’s websites to its own. Respondent is thus trading on the goodwill associated with Complainant’s Mark and creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s Website with Complainant’s Mark.
B. Respondent
Since 1996, Respondent has offered high-quality telecommunications solutions, video conferencing, audio conferencing, applications, and services worldwide from many manufacturers including products from Complainant.
In respect the charge that the disputed domain name <polycom-products.com> is similar to Complainant’s mark, Respondent has in no way, shape or form ever advertised, promoted, solicited, tried to confuse, establish its identity, or any other means necessary to confuse the public that it was Polycom, Inc.
Respondent has followed all rules and regulations according to Complaint’s Co-Branding Guidelines which was obtained from our Polycom login provided to us which establishes us as a distributor of Complainant’s products.
Respondent’s use of the <polycom-products.com> domain name does represent a bona fide offering of goods and services but authorized to sell Polycom, Inc. products and equipment through the purchase of said equipment from different authorized distributors around the country. Respondent has not intentionally or misleadingly diverted users away from Complainant’s website through the use of any means, including but not limited to, offline advertising, publication, pay-per-click campaigns, press releases, video, or any other forms of media. No diversionary techniques were employed and Complainant fails to produce any evidence to the contrary from exhibits supplied.
In regards to the accusation of using the disputed domain name in bad faith, Respondents were never formally notified from Polycom, Inc. with constructive notice and Complainant has failed to produce evidence to attest to this fact.
Polycom-Products.com in no way or form resembles the Complainant’s website and provides no indicating that they are representing Complainant. Respondent has not intentionally or misleadingly diverted users away from Complainant’s website through the use of any means, including but not limited to, offline advertising, publication, pay-per-click campaigns, press releases, video, or any other forms of media. No diversionary techniques were employed and Complainant fails to produce any evidence to the contrary from exhibits supplied. The bad faith standard does not apply to Respondent in this matter.
C. Additional Submissions
Complainant alleges contrary
to Respondent’s claims, Respondent is not an authorized or certified re-seller of Complainant’s goods. Respondent
sells Complainant’s goods as received through third parties. No agreement of
any kind, nor any relationship of any kind, exists
between Respondent and Complainant.
Also contrary to
Respondent's claims, Respondent was put on actual notice of Complainant’s
rights and claim of infringement of the domain name at issue. On February 9,
2006, Complainant sent a letter to Respondent specifically informing it of
Complainant’s rights in the POLYCOM mark, informing it of Complainant’s position
that unauthorized use of the POLYCOM mark in the domain name at issue in
connection with the marketing and sale of new and used POLYCOM branded goods is
likely to infringe upon Complainant’s rights, and demanding that Respondent
cease all such uses.
Respondent’s additional
submission response to complaint states:
Contrary
to the Complaint’s claim, they are not a certified reseller of Complainant’s
goods is false and is evidenced in an e-mail between Complainant’s
certification department and Ricardo Trinidad.
In light of the notification of the Complainant’s untimely additional submission stating that our facts were misstated and wrong, Ricardo Trinidad was notified of this. At the time he was notified he was currently in a meeting with Polycom for a Channel Partner sales meeting which included Doug Thiele (Director of Western Channels), Clifford A. John III (Regional Director of Midwest), Juli Jakes (Channel Manager for the Chicago Area), Sherrie Pipala (Voice Account Manager), Ezio Casalena (Director of US Voice Specialists), and Brent Sahl (Business Development Manager for Polycom Global Services).
Ricardo Trinidad brought the matter up Emil Babineau, Telcom & Data's Business Development Manager from ScanSource Communications. ScanSource is our authorized distributor. Mr. Babineau immediately called over Juli Jakes and explained the problem. Ms. Jakes responded that she would call Peter Lawson and resolve the misunderstanding.
Respondent alleges that even though they received a certified letter from Complainant as evidenced by the exhibit we have never came into possession of it.
FINDINGS
The Panel finds that:
· Complainant has established that it owns a distinctive, protected, and federally-registered mark.
· The disputed domain name <polycom-products.com> is confusingly similar to Complainant’s valid mark.
· Complainant has made a prima facie showing that the Respondent does not have a legitimate interest in the disputed domain name.
· Respondent is using the disputed domain name in bad faith.
DISCUSSION
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:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The
Panel finds that Complainant has rights in the POLYCOM mark through its
registration with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 1,783,295, issued July 20, 1993). See Thermo
Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006)
(finding that the complainants had established rights in marks where the marks
were registered with a trademark authority); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has
established rights in the AIG mark through registration of the mark with
several trademark authorities throughout the world, including the United States
Patent and Trademark office (‘USPTO’)”).
Complainant contends that Respondent’s <polycom-products.com> domain name is confusingly similar to its POLYCOM mark. The <polycom-products.com> domain name differs from Complainant’s mark in three ways: (1) a hyphen has been added to the mark; (2) the generic term “products” has been added to the end of the mark; and (3) the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The Panel finds that adding neither a hyphen, nor a generic term, nor a top-level domain to a mark sufficiently distinguishes a domain name from that mark. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that the <polycom-products.com> domain name has not been sufficiently distinguished from, and is confusingly similar to, Complainant’s POLYCOM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have
rights or legitimate interests. See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (Complainant makes a prima facie
showing that Respondent does not have rights or legitimate interest in the
subject domain names, which burden is light.
Complainant satisfies its burden, therefore the burden shifts to
Respondent to show that it does have rights or legitimate interests in the
subject domain names.).
Complainant contends that Respondent
is not commonly known by the <polycom-products.com> domain name
nor has it ever been the owner or licensee of the POLYCOM mark. The WHOIS record for the disputed domain name
lists Respondent as “Telcom & Data Inc.” The Panel therefore finds that Respondent is
not commonly known by the <polycom-products.com> domain name pursuant to Policy ¶ 4(c)(ii). See
Coppertown Drive-Thru Sys.,
LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003)
(“Given the WHOIS contact information for the disputed domain [name], one can
infer that Respondent, Onlyne Corporate Services11, is not commonly known by
the name ‘welsfargo’ in any derivation.”).
Complainant contends that Respondent is selling Complainant’s goods at the website that resolves from the disputed domain name, despite not being affiliated with or authorized by Complainant. The Panel finds that Respondent’s unauthorized sale of Complainant’s goods is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Complainant contends that Respondent diverts Internet customers from Complainant’s website to Respondent’s website that resolves from the disputed domain name, through the confusion caused by the similarity between the POLYCOM mark and the disputed domain name. Complainant also contends that Respondent intentionally disrupts Complainant’s business by its diversionary tactics, as Respondent is selling Complainant’s products, and Complainant contends that Respondent is not authorized to do so. The Panel finds that Respondent has disrupted Complainant’s business, and that this is evidence of Respondent’s registration and use of the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Complainant also contends that Respondent is intentionally using the disputed domain name to gain commercially from the sale of Complainant’s products. The Panel finds that this use by Respondent of the disputed domain name for commercial gain is evidence of registration and use in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <polycom-products.com> domain name be TRANSFERRED to the Complaint.
Hon. Nelson A. Diaz (ret. Judge), Panelist
Dated: March 16, 2009
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