General Communication, Inc. v. General Communications Inc. c/o Domain Admin
Claim Number: FA0608000778968
Complainant is General Communication, Inc. (“Complainant”), represented by Stephen L. Humphrey, of Cameron & Hornbostel LLP, 818 Connecticut Avenue NW, Suite 700, Washington, DC 20006. Respondent is General Communications Inc. c/o Domain Admin (“Respondent”), represented by Stephen L. Humphrey, of Cameron & Hornbostel LLP, 818 Connecticut Avenue, NW, Suite 700, Washington, DC 20006.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mygci.net>, registered with Nameview, 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 J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 16, 2006.
On August 21, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <mygci.net> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 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@mygci.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. 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 <mygci.net> domain name is confusingly similar to Complainant’s GCI mark.
2. Respondent does not have any rights or legitimate interests in the <mygci.net> domain name.
3. Respondent registered and used the <mygci.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1979, Complainant, General Communication, Inc., has continuously used the GCI mark in connection with telecommunications services, including local and long distance telephone, cable television cellular, Internet, e-mail and webspace services. Complainant is based in Anchorage, Alaska and is the largest telecommunications company and Internet service provider in Alaska. Complainant has a “MyGCI” program that offers customers the opportunity to create a customized Internet homepage and e-mail account through Complainant’s <my.gci.net> domain name. Based on Complainant’s estimates, over 100,000 Internet users have created “MyGCI” accounts.
Complainant holds several federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GCI mark (Reg. No. 2,281,319 issued September 28, 1999; Reg. No. 2,287,633 issued October 19, 1999; Reg. No. 1,304,141 issued November 6, 1984; Reg. No. 2,287,632 issued October 19, 1999).
Respondent registered the <mygci.net> domain name on January 22, 2003. Respondent’s domain name resolves to a commercial search engine that features links to competing communication service providers and subjects Internet users to pop-up advertisements.
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’s valid trademark registrations for the GCI mark demonstrate its rights in the mark for purposes of 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); see also Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that Complainant has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The only differences between the <mygci.net>
domain name and Complainant’s federally registered GCI mark are the addition of
the term “my” and the generic top-level domain (“gTLD”) “.net.” The Panel finds that neither addition
sufficiently distinguishes the disputed domain name from the mark. Hence, the Panel finds the <mygci.net>
domain name to be confusingly similar to the mark pursuant to Policy ¶
4(a)(i). See NIIT Ltd. v.
Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the
“domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part
thereof, is confusingly similar to the Complainant’s trade name and trademark
NIIT”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb.
Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM
registered by Respondent is confusingly similar to Complainant’s SportsCenter
mark.”); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000)
(finding that the domain name <nike.net> is identical to the
complainant’s famous NIKE mark).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the <mygci.net> domain name. Complainant must first make a prima facie
case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); 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).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <mygci.net>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
There is no evidence in the record suggesting that Respondent is commonly known by the <mygci.net> domain name or any variation. Complainant also has never authorized or licensed Respondent to incorporate its GCI mark in a domain name. Respondent apparently changed its registration information after Complainant filed its original Complaint so that it now appears as if Complainant is the registrant of the disputed domain name, when in reality Complainant has no control over the <mygci.net> domain name whatsoever. As a result, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Diners Club Int’l Ltd. v. Diners Club Int’l Ltd. c/o Domain Admin, FA 551103 (Nat. Arb. Forum Oct. 17, 2005) (ordering the transfer of the contested domain names where the respondent had changed the WHOIS information to list the complainant as the registrant of the domain names and the respondent did not contest any of the complainant’s allegations); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <mygci.net> domain
name, which includes Complainant’s GCI mark, to maintain a commercial search
engine displaying links to competing communication service providers. The Panel infers that Respondent is being
compensated for diverting Internet users to third-party websites through this
commercial search engine page.
Therefore, Respondent is taking advantage of the confusing similarity
between the disputed domain name and Complainant’s GCI mark in order to profit
from the goodwill associated with the mark.
The Panel holds that Respondent’s registration and use of the <mygci.net>
domain name for these purposes provides evidence of bad faith under Policy ¶
4(b)(iv). See Allianz of Am. Corp.
v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith
registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting
Internet users searching for the complainant to its own website and likely
profiting from click-through fees); see
also 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 third-party websites).
Because the <mygci.net> domain name resolves to
a web page with links to Complainant’s competitors in the communications
service industry, the Panel finds that Respondent has registered and is using
the subject domain name for the primary purpose of disrupting Complainant’s
business, which constitutes bad faith according to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc.
v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites).
Moreover, previous panels have concluded that when a
respondent provides false or misleading contact information to the registrar
for inclusion in the WHOIS database, the respondent has acted in bad faith
pursuant to Policy ¶ 4(a)(iii). In this
case, the Panel also finds that Respondent’s sudden change of the registration
information for the <mygci.net> domain name to list Complainant as
the registrant suggests bad faith registration and use. See
Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000)
(finding that use of false registration information constitutes bad faith); see
also Visit Am., Inc. v. Visit Am.,
FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (“Evidence that a domain name owner
provided incorrect information to a domain name registrar supports a finding of
bad faith registration.”).
The Panel concludes 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 <mygci.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 4, 2006
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