Alltel Corporation v. Unasi Inc.
Claim
Number: FA0508000532259
Complainant, Alltel Corporation (“Complainant”), is
represented by William Creasman, One Allied Drive B1F6-B, Little
Rock, AR 72202. Respondent is Unasi Inc. (“Respondent”), Galerias
Alvear 3, Zona 5, Panama, 5235, PA.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <alltelrigtones.com>, <alltelringones.com>,
<alltelringotnes.com>, <alltelringtnes.com>, <alltelringtoens.com>,
<alltelringtoes.com>, <alltelringtones.net>, <altelringtones.org>,
<alltelrintones.com>, <alltelstore.com>, <alltelfreeringtones.com>,
and <alltelringtones.org>, registered with Iholdings.com, Inc. d/b/a
Dotregistrar.com.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 8, 2005.
On
August 9, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the <alltelrigtones.com>,
<alltelringones.com>, <alltelringotnes.com>, <alltelringtnes.com>,
<alltelringtoens.com>, <alltelringtoes.com>, <alltelringtones.net>,
<altelringtones.org>, <alltelrintones.com>, <alltelstore.com>,
<alltelfreeringtones.com>, and <alltelringtones.org>
domain names are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and
that Respondent is the current registrant of the names. Iholdings.Com, Inc. d/b/a Dotregistrar.com
has verified that Respondent is bound by the Iholdings.com, Inc. d/b/a
Dotregistrar.com 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 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
6, 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@alltelrigtones.com, postmaster@alltelringones.com,
postmaster@alltelringotnes.com, postmaster@alltelringtnes.com, postmaster@alltelringtoens.com,
postmaster@alltelringtoes.com, postmaster@alltelringtones.net,
postmaster@altelringtones.org, postmaster@alltelrintones.com,
postmaster@alltelstore.com, postmaster@alltelfreeringtones.com, and
postmaster@alltelringtones.org by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 9, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <alltelrigtones.com>,
<alltelringones.com>, <alltelringotnes.com>, <alltelringtnes.com>,
<alltelringtoens.com>, <alltelringtoes.com>, <alltelringtones.net>,
<altelringtones.org>, <alltelrintones.com>, <alltelstore.com>,
<alltelfreeringtones.com>, and <alltelringtones.org> domain
names are confusingly similar to Complainant’s ALLTEL mark.
2. Respondent does not have any rights or
legitimate interests in the <alltelrigtones.com>, <alltelringones.com>,
<alltelringotnes.com>, <alltelringtnes.com>, <alltelringtoens.com>,
<alltelringtoes.com>, <alltelringtones.net>, <altelringtones.org>,
<alltelrintones.com>, <alltelstore.com>, <alltelfreeringtones.com>,
and <alltelringtones.org> domain names.
3. Respondent registered and used the <alltelrigtones.com>,
<alltelringones.com>, <alltelringotnes.com>, <alltelringtnes.com>,
<alltelringtoens.com>, <alltelringtoes.com>, <alltelringtones.net>,
<altelringtones.org>, <alltelrintones.com>, <alltelstore.com>,
<alltelfreeringtones.com>, and <alltelringtones.org>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a registration for the ALLTEL mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,322,561 issued February 26, 1985) and
has been operating its business under the ALLTEL mark since 1983. Complainant has been using its mark to
promote communication services in the United States and to promote information
services in over fifty countries worldwide.
Complainant also owns the <alltel.com> domain name registration
and has conducted business over its website since 1995.
Respondent
registered the <alltelrigtones.com>, <alltelringones.com>,
<alltelringotnes.com>, <alltelringtnes.com>, <alltelringtoens.com>,
<alltelringtoes.com>, <alltelringtones.net>, <altelringtones.org>,
<alltelrintones.com>, <alltelstore.com>, <alltelfreeringtones.com>,
and <alltelringtones.org> domain names between March 6, 2005 and
July 17, 2005. Ten of the domain names
redirect users to a website at the <wwwsprintringtones.com> domain
name. Sprint is Complainant’s
competitor. All of the disputed domain
names redirect Internet users to search engine websites that provide users with
various links to different third-party websites, offering products such as
ringtones for phones and cellular phone providers.
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.
Panels have
consistently held that a complainant’s registration of its mark with the USPTO
is sufficient to establish Complainant’s rights in the mark. In Innomed
Techs., Inc. v. DRP Services, FA 221171
(Nat. Arb. Forum Feb. 18, 2004), for example, a panel held that, “Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.” Id. Likewise, in Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003), a
panel held, “Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”
Id. Thus, the Panel
concludes that Complainant’s registration of its ALLTEL mark with the USPTO is
sufficient to establish Complainant’s rights in the mark.
Complainant
argues that each of the disputed domain names either wholly incorporate
Complainant’s ALLTEL mark or a misspelled version of it. Moreover, Complainant argues that each of
the disputed domain names add the common terms “ring,” “tones,” and/or “store,”
or misspelled versions of those terms.
Complainant avers that each of these terms has an obvious relationship
with Complainant’s telecommunication business.
The Panel holds that neither the addition of common words to
Complainant’s mark that describe Complainant’s business nor the misspellings of
Complainant’s mark and the common terms is sufficient to distinguish any of
Respondent’s domain names from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the respondent’s domain
name combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business); see also Dow Jones & Co.,
Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such “generic” typos do not change
respondent’s infringement on a core trademark held by the complainant); see
also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002)
(finding <googel.com> to be confusingly similar to the complainant’s
GOOGLE mark and noting that “[t]he transposition of two letters does not create
a distinct mark capable of overcoming a claim of confusing similarity, as the
result reflects a very probable typographical error”).
The Panel
concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
disputed domain names. The Panel holds
that Complainant’s assertion establishes a prima facie case and shifts
the burden to Respondent. To meet its
burden, Respondent must provide the Panel with evidence that it does have
rights or legitimate interests in the disputed domain names. Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that
the Respondent has no rights or legitimate interests in respect of the Domain
Name requires the Complainant to prove a negative. For the purposes of this sub
paragraph, however, it is sufficient for the Complainant to show a prima facie
case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel will analyze whether Respondent
could meet its burden of establishing rights or legitimate interests for
purposes of Policy ¶ 4(a)(ii).
Complainant
contends that Respondent is not commonly known by the disputed domain
names. Moreover, Respondent’s WHOIS
information indicates that Respondent is known as “Unasi, Inc.” Because Respondent did not provide the Panel
with a response, the Panel accepts Complainant’s allegation that Respondent is
not commonly known by the disputed domain names as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that the complainant’s
allegations are true unless clearly contradicted by the evidence). Because Respondent did not provide any
evidence to prove that it is commonly known by the disputed domain names, the
Panel infers that it does not have rights or legitimate interests in the <alltelrigtones.com>,
<alltelringones.com>, <alltelringotnes.com>, <alltelringtnes.com>,
<alltelringtoens.com>, <alltelringtoes.com>, <alltelringtones.net>,
<altelringtones.org>, <alltelrintones.com>, <alltelstore.com>,
<alltelfreeringtones.com>, and <alltelringtones.org>
domain names. See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Gallup, Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark).
Complainant
claims that Respondent is using the disputed domain name to divert Internet
users away from Complainant’s website to Respondent’s website, which features
search engines with links to Complainant’s competitors. Moreover, Complaniant argues that Respondent
benefits from its diversion by receiving fees every time an Internet users
clicks on one of the links. The Panel
finds that such diversion 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website).
Accordingly, the
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant
argues that Respondent is using the disputed domain names to divert Internet
users to websites that features links to Complainant’s competitors’ and to
profit from diverting such Internet users to various websites. The Panel holds that Respondent is creating
a likelihood of confusion for its own commercial gain. The Panel concludes that such use is evidence
of bad faith use and registration under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where the respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that the complainant is the source of
or is sponsoring the services offered at the site); see also 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).
Additionally,
Complainant argues that Respondent had actual knowledge of Complainant’s rights
in the mark because of the obvious connection between Complainant’s business
and the content of Complainant’s website.
The Panel holds that actual knowledge of Complainant’s rights at the
time of registration is evidence of bad faith use and registration under Policy
¶ 4(a)(iii). See Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link
between the complainant’s mark and the content advertised on the respondent’s
website was obvious, the respondent “must have known about the Complainant’s
mark when it registered the subject domain name”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <alltelrigtones.com>, <alltelringones.com>,
<alltelringotnes.com>, <alltelringtnes.com>, <alltelringtoens.com>,
<alltelringtoes.com>, <alltelringtones.net>, <altelringtones.org>,
<alltelrintones.com>, <alltelstore.com>, <alltelfreeringtones.com>,
and <alltelringtones.org> domain names be TRANSFERRED from
Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
September 22, 2005
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