Cricket Communications, Inc. v. Pioneer Enterprises Limited c/o Pioneer Enterprises
Claim Number: FA1008001339742
Complainant is Cricket
Communications, Inc. (“Complainant”), represented by Lisa M. Martens, of Fish & Richardson P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cricketwireless.com>, registered with DOMAINMARKETPLACE.CA INC.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 6, 2010.
On August 10, 2010, DOMAINMARKETPLACE.CA INC confirmed by e-mail to the National Arbitration Forum that the <cricketwireless.com> domain name is registered with DOMAINMARKETPLACE.CA INC and that Respondent is the current registrant of the name. DOMAINMARKETPLACE.CA INC has verified that Respondent is bound by the DOMAINMARKETPLACE.CA 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 August 11, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2010 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@cricketwireless.com by e-mail. Also on August 11, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cricketwireless.com> domain name is identical to Complainant’s CRICKET WIRELESS mark.
2. Respondent does not have any rights or legitimate interests in the <cricketwireless.com> domain name.
3. Respondent registered and used the <cricketwireless.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cricket Communications, Inc., owns a trademark for its CRICKET WIRELESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,653,013 issued July 14, 2009) in connection with telecommunications services.
Respondent, Pioneer Enterprises Limited c/o Pioneer Enterprises, registered the disputed domain name on July 21, 2010. The disputed domain name resolves to a website featuring pay-per-click advertisements and links.
Complainant asserts that Respondent has been the respondent in several prior UDRP proceedings resulting in the transfer of the domain names to be transferred to the respective complainant’s in those cases. See Cabela’s, Inc. v. Pioneer Enter. Ltd. c/o Pioneer Enter., FA 1278786 (Nat. Arb. Forum Sept. 21, 2009); see also The Finish Line, Inc. v. Pioneer Enter. Ltd. c/o Pioneer Enter., FA 1322641 (Nat. Arb. Forum June 9, 2010).
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts rights in its CRICKET WIRELESS mark
based on its registration of the mark with the USPTO (Reg. No. 3,653,013 issued
July 14, 2009). The Panel finds that
Complainant’s registration of its mark with the USPTO is sufficient to
establish rights in its CRICKET WIRELESS mark under Policy ¶ 4(a)(i). See Intel Corp. v.
Macare, FA 660685 (Nat. Arb. Forum Apr.
26, 2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Additionally, the Panel finds that it is
irrelevant whether Complainant registered its mark in the country where
Respondent resides or operates, only that Complainant can establish rights in
some jurisdiction. See Renaissance
Hotel Holdings, Inc. v. Renaissance
Complainant asserts that Respondent’s <cricketwireless.com>
domain name is identical to
Complainant’s CRICKET WIRELESS mark. The
disputed domain name incorporates Complainant’s mark in its entirety while
deleting the space between the terms and adding the generic top-level domain
(“gTLD”) “.com.” The Panel finds that
these alterations do not distinguish the disputed domain name from
Complainant’s mark. See
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights or
legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to prove it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint,
the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has
failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the
burden shifts to [the] respondent to show it does have rights or legitimate
interests.”); see also 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Nevertheless, the Panel will examine the record to determine if
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by
Complainant’s CRICKET WIRELESS mark or any variation thereof. Complainant also asserts that the WHOIS
information indicates that the registrant of the disputed domain name is
“Pioneer Enterprises Limited c/o Pioneer Enterprises.” The Panel finds that Complainant’s
assertions, without any refutation by Respondent, establishes that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii).
See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Complainant alleges
that Respondent’s <cricketwireless.com> domain name resolves to a website featuring
pay-per-click advertisements and links. The
Panel finds that Respondent’s use of the disputed domain name for such a
purpose is neither a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb.
Forum Aug. 2, 2006) (finding that the operation of a commercial web directory
displaying various links to third-party websites was not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as
the respondent presumably earned “click-through” fees for each consumer it
redirected to other websites); see also
Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i)
nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the
registrant presumably receives compensation for each misdirected Internet
user).
Complainant alleges that
Respondent offered to sell the <cricketwireless.com> domain name to Complainant for $15,000. The Panel finds that Respondent’s offer to
sell the disputed domain name for an amount far in excess of Respondent’s
out-of-pocket costs is further evidence that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Reese v. Morgan,
FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s
willingness to sell a contested domain name for more than its out-of-pocket
costs provided additional evidence that Respondent had no rights or legitimate
interests in the contested domain name); see
also George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a
respondent makes a “disproportionate” offer to sell its domain name
registration to the complainant for more than its out-of-pocket registration
costs, there is additional evidence that the respondent lacks rights and
legitimate interests in the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent offered to sell the
disputed domain name to Complainant for $15,000 which Complainant argues is far
greater than Respondent’s out-of-pocket costs.
The Panel finds that such an offer is evidence of Respondent’s bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries
Inc. v. McBroom, FA 933276 (Nat.
Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and
was using the <gwbakeries.mobi> domain name in bad faith according to
Policy ¶ 4(b)(i) where it offered it for sale for far
more than its estimated out-of-pocket costs it incurred in initially
registering the disputed domain name); see
also Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)).
Complainant alleges that
Respondent has been the respondent in several prior UDRP proceedings which
resulted in the domain names being transferred to the respective complainant’s
in those cases. See Cabela’s, Inc. v. Pioneer Enter. Ltd. c/o Pioneer Enter.,
FA 1278786 (Nat. Arb. Forum Sept. 21, 2009); see also The Finish Line,
Inc. v. Pioneer Enter. Ltd. c/o Pioneer Enter., FA 1322641 (Nat. Arb. Forum June
9, 2010). The Panel finds that
Respondent’s serial cybersquatting is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v.
Complainant argues that
Respondent’s disputed domain name provides links to third-party commercial
websites. The Panel presumes that
Respondent profits from the receipt of click-through fees when Internet users
click on the displayed links. Therefore,
the Panel finds that Respondent has registered and used the disputed domain
name in bad faith under Policy ¶ 4(b)(iv) by
intentionally attempting to attract Internet users for Respondent’s commercial
gain. See Bank
of Am. Fork v. Shen, FA 699645 (Nat.
Arb. Forum June 11, 2006) (holding that the respondent’s
previous use of the <bankofamericanfork.com> domain name to maintain a
web directory was evidence of bad faith because the respondent presumably
commercially benefited by receiving click-through fees for diverting Internet
users to unrelated third-party websites); see
also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cricketwireless.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 23, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum