Hop-on Wireless, Inc. v. Tim Leach
Claim
Number: FA0502000414564
Complainant is Hop-on Wireless, Inc. (“Complainant”), represented
by Clay E. Gaetje, of The Law Offices of Robert T. Braun, 10810 Turnleaf Lane, Tustin Ranch, CA 92782. Respondent is Tim Leach (“Respondent”), 1600 Turquoise Drive, Carlsbad, CA 92009.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hoponwireless.com>, registered with Go
Daddy Software, 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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 4, 2005.
On
February 3, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hoponwireless.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has verified that Respondent is
bound by the Go Daddy Software, 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 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
February 28, 2005 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@hoponwireless.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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." 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 <hoponwireless.com>
domain name is confusingly similar to Complainant’s HOP-ON WIRELESS mark.
2. Respondent does not have any rights or
legitimate interests in the <hoponwireless.com> domain name.
3. Respondent registered and used the <hoponwireless.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant uses
the HOP-ON WIRELESS mark in connection with cellular telephones, cellular
telephone accessories, wireless telephones, wireless telephone accessories,
electronic equipment including surveillance cameras and systems, and toys. Complainant has continuously used the mark in
commerce since May 2001.
Complainant filed
a registration application for the HOP-ON WIRELESS mark with the U.S. Patent
and Trademark Office (Ser. No. 78551810) on January 21, 2005.
Respondent
registered the <hoponwireless.com> domain name on April 4,
2001. The WHOIS page, which is dated
January 20, 2004, lists Complainant’s employees as being the Administrative
Contact, Technical Contact, and Zone Contact for the disputed domain name. Until approximately January of 2004, the
disputed domain name pointed to Complainant’s parent company’s website located
at <hop-on.com>. The record
indicates that the website associated with the disputed domain name advertised
that the domain name was for sale and for inquiries to be sent to tim@blu2.com. The website also contained various
advertisements for GoDaddy.com, the registrar of the disputed domain name.
On January 17,
2005, Complainant’s agent, Mr. Rigo Sauceda, made an anonymous inquiry to
Respondent as to whether the domain name was for sale. Specifically, Mr. Sauceda stated, “Hi, I’m
interested in purchasing the hoponwireless.com domain name and I wanted to know
that the asking price for it is. Thanks!”
Respondent responded to Mr. Sauceda, “Make me an offer with lots of
zeros.”
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.
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.
Registered and
unregistered trademarks and service marks are afforded protection under the
Policy. See Great Plains
Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The
Policy does not require that a trademark be registered by a governmental
authority for such rights to exist.”); see
also McCarthy on Trademarks and Unfair Competition, § 25:74.2
(4th ed. 2002) noting that the ICANN dispute resolution policy is “broad in
scope” in that “the reference to a trademark or service mark ‘in which the
complainant has rights’ means that ownership of a registered mark is not
required–unregistered or common law trademark or service mark rights will
suffice” to support a domain name Complaint under the Policy.
In determining
whether or not Complainant has rights in the HOP-ON WIRELESS mark, the
Panel notes that Respondent failed to contest the allegations and the evidence
contained within the Complaint. Due to Respondent's failure to submit a
response, the Panel has chosen to view the Complaint in a light most favorable
to Complainant, and will accept all reasonable allegations and inferences in
the Complaint as true. See Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002)
finding that in the absence of a Response the Panel is free to make inferences
from the very failure to respond and assign greater weight to certain
circumstances than it might otherwise do; see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that
failing to respond allows a presumption that complainant's allegations are true
unless clearly contradicted by the evidence.
It is
established under the Policy that a mere trademark application is not enough to
establish rights in a mark, absent an issuance of registration or Notice of Allowance. In the instant case, Complainant has filed a
registration application with the U.S. Patent and Trademark Office for the
HOP-ON WIRELESS mark. Yet, the mark is
still unregistered and a notice of allowance has not been issued. Therefore, Complainant’s trademark
application is insufficient, standing alone, to establish rights in the mark
pursuant to paragraph 4(a)(i) of the Policy.
See Bar Code
Disc. Warehouse, Inc. v. Barcodes, Inc.,
D2001-0405 (WIPO July 27, 2001) (“[A]n application for registration
standing alone establishes neither rights nor presumptions.”); see also Royal Caribbean Cruises Ltd. v. Gold
Anchor Serv., D2003-0443
(WIPO July 17, 2003) the panel found rights in a trademark only after
Complainant filed an application with the United States Patent and Trademark
Office and a notice of allowance had been granted.
Distinctiveness
is the threshold requirement for a valid trademark. Distinctiveness takes two forms.
First, a mark may be inherently distinctive if its “intrinsic nature serves
to identify a particular source.” See Two
Pesos v. Taco Cabana, 505 U.S. 763, 768 (1992). Inherently distinctive marks include arbitrary, fanciful, or
suggestive marks. Second, marks that
are merely descriptive may be distinctive provided that, “in the minds of the
public, the primary significance of [the mark] is to identify the source of the
product rather than the product itself.”
See Inwood Labs. v. Ives Labs., 456 U.S. 844, 851, n.11 (1982).
In the instant
case, the HOP-ON WIRELESS mark is used in connection with cellular telephones,
cellular telephone accessories, wireless telephones, wireless telephone
accessories, electronic equipment including surveillance cameras and systems,
and toys. A single mark may be
descriptive when used in connection with some goods or services, while being
arbitrary, fanciful, or suggestive when used in connection with other goods or
services. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
11-12 (2d Cir. 1976).
“‘[S]uggestive’
trademarks require imagination, thought, or perception to link the trademark
with the goods (e.g. ROACH MOTEL for insect traps); and "descriptive"
trademarks merely describe the goods (e.g. YELLOW PAGES).” See Interstellar
Starship Servs. v. Epix, Inc., 304 F.3d 936, 943 (9th Cir. 2002). The line separating suggestive and
descriptive marks is often fuzzy and no bright line rule exists to classify
when imagination stops and description begins.
When used in connection with cellular telephones, Complainant’s HOP-ON
WIRELESS mark merely brings to mind the act of jumping onto a different medium
known as “wireless.” The wireless
medium exists for a variety of technologies such as the Internet, telephones,
navigation systems, etc. A further
inference is required for a customer to conclude that the mark HOP-ON WIRELESS
relates to cellular phones, and does not merely describe the goods. Therefore, the Panel concludes that the
HOP-ON WIRELESS mark, when used in connection with cellular phones, is
suggestive. In conjunction with the
foregoing, and in light of the fact that Respondent has not refuted
Complainant’s assertion of rights in the mark, the Panel concludes that
Complainant has established rights in the HOP-ON WIRELESS mark.
A domain name
that contains a third-party mark in its entirety, with the exception of the
removal of hyphens and spaces from the mark, has been found to be confusingly
similar to the mark pursuant to paragraph 4(a)(i) of the Policy. In the instant case, the <hoponwireless.com>
domain name contains Complainant’s HOP-ON WIRELESS mark in its entirety, but
has simply removed the hyphen between the words “hop” and “on,” and has omitted
the space between the terms “hop-on” and “wireless.” Consistent with prior decisions under the Policy, the Panel finds
the disputed domain name is confusingly similar to Complainant’s mark pursuant
to paragraph 4(a)(i) of the Policy. See
Chernow Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks,
such as hyphens, does not alter the fact that a name is identical to a
mark."); see also Teradyne Inc. v. 4Tel Tech., D2000-0026
(WIPO May 9, 2000) ( “[The] addition of a hyphen to the registered mark is an
insubstantial change. Both the mark and the domain name would be pronounced in
the identical fashion, by eliminating the hyphen."); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark because the absence of the space is insignificant.
Complainant has
established Policy ¶ 4(a)(i).
The fact that
Respondent failed to respond to the Complaint is construed as an implicit
admission that Respondent lacks rights and legitimate interests in the disputed
domain name. See
Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding
that Respondents’ failure to respond can be construed as an admission that they
have no legitimate interest in the domain names; see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
Respondent used
Complainant’s employees’ contact information in the WHOIS registration
information. Respondent then connected
the disputed domain name to a website operated by Complainant’s parent
company. However, Respondent was not
authorized by Complainant to engage in these activities, or to use
Complainant’s trademark in the disputed domain name. By acting in this manner, the Panel finds that Respondent was attempting
to pass itself off as Complainant, which does not evidence a bona fide offering
of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor a
legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii). See
Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May
30, 2003) finding that as Respondent
attempted to pass itself off as Complainant online, through wholesale copying
of Complainant’s website, Respondent had no rights or legitimate interests in
the disputed domain name.
For the reasons
above, the Panel finds that Respondent is not commonly known by the disputed
domain name pursuant to paragraph 4(c)(ii) of the Policy. See Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name; see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) finding no rights or legitimate interests where
(1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights
in the mark precede Respondent’s registration; (3) Respondent is not commonly
known by the domain name in question.
Complainant has
established Policy ¶ 4(a)(ii).
As stated prior,
Respondent used Complainant’s employees’ contact information in the WHOIS
registration information and connected the disputed domain name to a website
operated by Complainant’s parent company.
Those two facts demonstrate that Respondent had actual knowledge of
Complainant’s business, as well as Complainant’s rights in the HOP-ON WIRELESS
mark at the time it registered the domain name. Such knowledge is evidence of bad faith registration and use
pursuant to paragraph 4(a)(iii). See Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse."); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) finding that because
the link between Complainant’s mark and the content advertised on Respondent’s
website was obvious, Respondent “must have known about the Complainant’s mark
when it registered the subject domain name”.
Moreover, the
evidence indicates that Respondent registered the domain name primarily to sell
the domain name registration to either Complainant, or a competitor of
Complainant, for valuable consideration in excess of Respondent’s out-of-pocket
expenses directly related to the domain name.
First, Respondent registered a domain name that is confusingly similar
to Complainant’s mark. Second,
Respondent registered the domain name by using Complainant’s employees’ contact
information in the WHOIS registration information. Third, Respondent pointed the disputed domain name to
Complainant’s parent company’s website.
Fourth, in response to Complainant’s agent’s anonymous inquiry into the
possible sale of the domain name registration, Respondent responded by stating,
“Make me an offer with lots of zeros.”
This evidence is sufficient to establish that Respondent registered and
used the disputed domain name in bad faith pursuant to paragraph 4(b)(i) of the
Policy. See Euromarket Designs,
Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“[T]he manner
in which the Respondent chose to identify itself and its administrative and
billing contacts both conceals its identity and unmistakably conveys its
intention, from the date of the registration, to sell rather than make any use
of the disputed domain name”); see
also Marrow v. iceT.com, D2000-1234
(WIPO Nov. 22, 2000) stating that a Panel should not “put much weight on the
fact that it was the Complainant who contacted Respondent to see if it was
interested in selling the domain name”.
Complainant has
established 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 <hoponwireless.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
March 21, 2005
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