Inter-Tel, Inc. v. Michael Marcus
Claim Number: FA0606000727697
PARTIES
Complainant is Inter-Tel, Inc. (“Complainant”), represented by Michelle Whittington, 7300 West Boston Street, Chandler, AZ 85226. Respondent is Michael Marcus (“Respondent”), 195 Magnolia Road, Milford, CT 06460.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <intertelphonesystems.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2006.
On June 6, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <intertelphonesystems.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 June 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 3, 2006 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@intertelphonesystems.com by e-mail.
A timely Response was received and determined to be complete on July 3, 2006.
On
July 13, 2006, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the National
Arbitration Forum appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- Complainant was founded in 1969, and has continuously used and subsequently registered several United States trademarks incorporating its “INTER-TEL” mark.
- Complainant markets telecommunication products and services through licensed dealers. Complainant has agreements with only a small number of companies to sell its EncoreCX line of products, which Complainant believes may be resold, but without Complainant’s agreement or direct authorization.
- Respondent, the president of Ablecomm.inc, registered the disputed domain name, <intertelphonesystems.com>, for use by Ablecomm.inc (which for convenience shall be hereinafter referred together with Respondent as “Respondent”) in the resale, without authorization or license from Complainant, of EncoreCX products and services.
- After requesting by letter that Respondent cease using the disputed domain name, Complainant offered by phone in April, 2006 to reimburse Respondent for its out-of-pocket costs relative to the name.
- In May, 2006, Respondent replied to Complainant’s offer by e-mail, denying any infringement of Complainant’s trademark and, later, requesting an opening offer for the disputed domain name.
- Later in May, 2006, Complainant offered $300 for the disputed domain name, and Respondent countered by requesting $260,000. Two further attempts (on or about June 2 and June 5, 2006) by Complainant to negotiate a reasonable price nearer $300 were rejected by Respondent as “grossly inadequate.”
- The disputed domain name is confusingly similar to Complainant’s mark because it incorporates the mark fully, excluding only the hyphen between “INTER” and “TEL,” and merely adds to it the generic and descriptive words “phone” and “systems.” Phone systems accurately characterize both Complainant’s products and those sought to be sold by Respondent under the disputed domain name.
- Respondent lacks rights or legitimate interests in respect of the disputed domain name because Complainant has not authorized, licensed or otherwise contracted with Respondent to use the Complainant’s trademark, Respondent is not commonly known by that name and its use of the name is neither noncommercial nor fair use.
- Respondent has registered and used the disputed domain name in bad faith as evidenced by Respondent’s sale of products that compete directly with Complainant’s products under that confusingly similar domain name, and by Respondent’s attempt to sell the name to Complainant for an excessive monetary gain.
B. Respondent
- Respondent is not a competitor of Complainant, but a customer and authorized reseller of Complainant’s products and services.
- Complainant had more than ten years to register the disputed domain name and failed to do so.
- Respondent is in business to sell telephone systems, not domain names, and is thus not a “cyber-squatter.”
- There is no mistaking Respondent’s web site for Complainant’s since Respondent’s web site is clearly marked as belonging to Respondent as simply a dealer of Complainant’s phone systems.
- The Complaint against Respondent’s use of the disputed domain name is inconsistent and insincere because Complainant has stated (by e-mail, dated June 5, 2006) that it would allow Respondent to use the domain names, <usedintertel.com> and <intertelbyablecomm.com>.
- Many domain names using famous company names are used to sell products by other than those companies (i.e., <samsungtelephonesystems.com> is not operated by Samsung, <Lucenttelephonesystems.com> is not operated by Lucent, etc.)
- Though preferring to retain the disputed domain name, Respondent is willing to sell it to Complainant, but for much more than the insulting price of $300, which represents only a fraction of the value in product sales generated by Respondent’s use of the name. In this vein, Respondent would accept a price lower than $260,000 if Complainant engaged in certain promotional efforts on Respondent’s behalf.
- “Intertel” is not distinctive and variations of it are found in many other company names.
- Because the disputed domain name has neither a hyphen nor capital letters, it is dissimilar to Complainant’s trademark.
- Although the disputed domain name is used by Respondent to sell some products manufactured by Complainant, there is not a complete overlap in offerings with Complainant’s products and services.
- Respondent is affiliated with Complainant as evidenced by correspondence from Complainant to Respondent referring to its status as “Certified Dealer” and by approval and appointment of Respondent as “authorized reseller” and “preferred installer.”
- Some customers know Respondent by the disputed domain name, by virtue of using it to access Respondent’s products.
- Respondent causes no customer confusion by use of the disputed domain name. Respondent does not compete with Complainant, but merely engages in the authorized resale of its products.
FINDINGS
- Complainant is maker and seller of telephone system products, for which it also provides services. It has operated for more than 30 years under the registered trademark, “INTER-TEL” (i.e., United States Trademark Registration No. 998,103 [November 12, 1974], United States Trademark Registration No., 1,793,881 [September 21, 1993], etc.).
- Respondent registered the disputed domain name, <intertelphonesystems.com>, for one year beginning January 1, 2006. Respondent uses the disputed domain name for its web site that offers some of Complainant’s products for resale.
- During April, May and June, 2006, Complainant and Respondent engaged in correspondence and telephone calls, during which they discussed the sale of the disputed domain name but remained very far apart as to price (i.e., Complainant offering $300 and Respondent requesting approximately $260,000 in money and/or promotional activities).
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 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;
(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.
Respondent asserts that “Intertel” is not a distinctive name in that many businesses use variations of that name in trade. However, in view of the duration of Complainant’s use and valid United States Trademark Registrations in the mark “INTER-TEL,” the Panel finds that Complainant has established conclusively its rights in that trademark.
The Panel also finds that the disputed domain name is confusingly similar to that trademark. While the first part of the disputed domain name is “intertel” and not “INTER-TEL,” the Panel notes that prior ICANN panels have concluded that deletion (or addition) of hyphens and/or the lower casing of letters in domain names do not negate the confusing similarity between them and established trademarks. See Inter-Tel, Inc. v. Interactive Teleservices, FA 257379 (Nat. Arb. Forum June 11, 2004); see also Phenomedia AG v. Meta Verzeichnis Com, D2001-0374 (WIPO May 27, 2001).
Moreover, the Panel determines the addition of the words “phone” and “systems” does not reduce the confusion Internet users may encounter because Complainant’s enterprise is described exactly by those words. Many other panels operating under the Policy have come to a similar conclusion when confronted with a valid trademark after which descriptive business words are added. See, e.g., Yamaha Motor Corp., USA v. Crescenzi, D2005-1269 (WIPO February 6, 2006) (finding <yamahagolfcart.com> to be confusingly similar to the trademark “Yamaha”); see also Harrods Ltd. v. Pierre, D2001-0456 (WIPO June 6, 2001) (finding <harrodsdepartmentstore.com> and <harrodsstores.com> to be confusingly similar to the trademark “Harrods”).
Respondent has asserted that Complainant’s objection to the confusing similarity and the alleged appropriation of its trademark is insincere and inconsistent because Complainant would permit Respondent to use the domain names <usedintertel.com> and <intertelbyablecomm.com>. Without attempting to determine the truth of that allegation, the Panel notes that under the Policy it is not the duty of the Panel to decipher whether Complainant is entirely consistent in its claims of unfair registration and use of domain names containing its valid trademark, only whether it is justified in seeking protection of those rights with respect to the specific disputed domain name brought before the Panel.
Accordingly, the Panel finds that Complainant has sustained its burden in showing that the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
Certainly, if Complainant has licensed or authorized Respondent’s use of Complainant’s mark in the disputed domain name, Respondent would have rights and legitimate interests in the name. Complainant asserts that it has not so licensed or authorized Respondent’s use. On the other hand, Respondent alleges that Complainant has done just that. Respondent alleges that Complainant, in communications with Respondent, has referred to Respondent as a “Certified Dealer,” “authorized reseller” and “preferred installer” of some of Complainant’s products. Furthermore, Complainant itself has acknowledged in the Complaint that it was aware that Respondent was engaged in the resale of Complainant’s products, apparently without objection. However, because Respondent has produced no contract with Complainant controlling this relationship or authorizing the use of Complainant’s trademark in any way, the Panel is disinclined to find that a license or authorization exists.
If unable to produce sufficient evidence of license or authorization, Respondent can look to Paragraph 4(c) of the Policy for ways in which to establish its rights or legitimate interests in the disputed domain name. In this case, with respect to Policy Paragraphs 4(c)(ii) and (iii), Respondent has failed to present credible evidence that it has been commonly referred to by the disputed domain name or that it has sought to use the disputed domain name in a non-commercial or fair use manner. However, the Panel believes that Respondent, in its resale of Complainant’s products, even without specific authorization to do so, falls within the provisions of Policy Paragraph 4(c)(i).
The Panel is aware of previous cases decided by ICANN panels which hold that specific resale authorization is irrelevant if certain other criteria are established in determining whether a respondent’s use of a disputed domain name in the resale of complainant’s products, prior to commencement of the dispute, constitutes a bona fide offering of goods or services in accord with Policy Paragraph 4(c)(i). See Volvo Trademark Holding AB v. Auto Shivuk, D2005-0447 (WIPO June 8, 2005); see also Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, D2004-0481 (WIPO August 20, 2004). The panels in these cases reiterated criteria first articulated in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001), where the respondent was found to be an authorized reseller of the complainant as follows:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
(iii) The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the web site is the official site if, in fact, it is only one of many sales agents;
(iv) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
Without further inspection, Respondent clearly satisfies criteria (i) and (iv), since even Complainant concedes that Respondent is selling Complainant’s products and that Respondent has registered only one domain name referencing Complainant’s trademark to do so. Upon inspecting Respondent’s web site found at the disputed domain name, the Panel notes that it states clearly that it is “an Ablecomm website” next to a logo reading “Inter-Tel Certified Dealer.” Whether the substance of that logo is true or not, the combination of those two labels certainly distinguishes the web site from ownership by the trademark owner and thus satisfies criterion (iii).
With respect to criterion (ii) above, the Panel notes that it is possible to use the web site found at the disputed domain name to access Respondent’s other web sites to buy products not manufactured by Complainant. Also, at the bottom of the web site two phones not produced by Complainant are advertised for sale. However, undeniably the web site is directed overall toward selling Complainant’s products. In rendering its determination on this issue, the Panel is mindful of the reasoning set forth in Porsche AG, supra, that “Clearly designated links to websites, under which other brands or products are offered, cannot be considered as the offering of other brands or products under the Domain Names, provided they take up only a minor part of the site and the overall impression of that site remains that of a site offering corresponding [i.e., Complainant’s] goods.” Thus, the Panel concludes that Respondent has satisfied this criterion also.
Consequently, the Panel finds that Complainant has failed to demonstrate that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Since Complainant did not prevail with respect to Paragraph 4(a)(ii) of the Policy, the Panel will not consider whether the disputed domain name was registered and used in bad faith.
DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
___________________________________________________
Dennis A. Foster,
Panelist
Dated: July 27, 2006
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