WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cellular One Group v. Paul Brien

Case No. D2000-0028

1. The Parties

The Complainant is Cellular One Group, a Delaware partnership, located and doing business at 5001 LBJ Freeway, Suite 700, Dallas, Texas, USA. The Respondent is Paul Brien, and individual resident at 30051 Poseidon, Laguna Niguel, California, United States of America.

2. The Domain Name(s) and Registrar(s)

The domain name at issue is {cellularonechina.com} (the "Domain Name"), which Domain Name is registered with Network Solutions, Inc. ("Network Solutions").

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 4, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated February 8, 2000.

On or about February 4, 2000, a Request for Registrar Verification was transmitted to Network Solutions. Network Solutions confirmed by reply e-mail that the Domain Name is registered with Network Solutions that the Respondent, Paul Brien, was the current registrant of the name and that Network Solutionís 4.0 Service Agreement is in effect. The reply also contained contact information for the Respondent.

The Panel finds that the ICANN Uniform Domain Name Disputed Resolution Policy (the "Policy") is the Policy applicable to this dispute.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on February 8, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on February 8, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of February 27, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail address specified in Network Solutionsí Whois confirmation, as well as to {postmaster@cellularonechina.com}; no e-mail addresses were found at any web page relating to the disputed domain name. In addition, the Complaint was sent by facsimile to the listed fax number and express courier to all available postal addresses. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

In view of the Complainantís designation of single panelist (but without prejudice to any election to be made by the respondent) the WIPO Center invited Thomas D. Halket to serve as a panelist in Case No. D2000-0028, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

On February 28, 2000, having received no Response from the designated respondent, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.

Having received Thomas D. Halketís Statement of Acceptance and Declaration of Impartiality and Independence, on February 29, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date was March 13, 2000. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

4. Factual Background

The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by that the Respondent. Complainant owns numerous U.S. and international trademark registrations and applications for the mark CELLULARONE, many of which are well known. The Complainantís trademarks predate any use or registration of the Domain Name, are in full force and effect, and have not been abandoned. Other than to register the Domain Name, Respondent has made no use of it and, in particular, no web site exists for the Domain Name.

5. Partiesí Contentions

A. Complainant

Complainant contends that respondent has registered as a domain name a mark which is identical or confusingly similar to the service mark and trademark registered and used by complainant, that the respondent has no rights or legitimate interests in respect to the domain name at issue, and that the respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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." Since both parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) that the respondent has no legitimate interests in respect of the domain name; and, (iii) the domain name has been registered and used in bad faith."

The Panel finds that the Domain Name violates the Policy.

The Domain Name clearly violates Paragraph 4(a)(i) of the Policy in that it is identical or confusingly similar to the trademarks/service marks in Exhibits 1 and 2 of the Complaint in which the Complainant has prior rights. The Domain Name also equally clearly violates Paragraph 4(a)(ii) of the Policy in that (i) Respondent is not a member or licensee of Complainant, and has not received any permission or consent to use the trademark CELLULARONE; (ii) Complainantís use of the trademark CELLULARONE precedes by over a decade the registration date of the Domain Name; (iii) CELLULARONE is a unique and inherently distinctive coined word; and (iv) Respondent is not (either as an individual, business or other organization) commonly known by the name Cellularone or Cellularonechina.

Whether or not the Domain Name violates Paragraph 4(a)(iii) of the Policy is, however, not so clear. As a matter of United States law, Respondent had prior constructive or actual knowledge of Complainantís trademark. He nevertheless proceeded to register the Domain Name, a domain name which the panel notes contains Complainantís entire trademark CELLULARONE. Based on these facts, the Panel has no alternative but to agree with Complainant that registration of the Domain Name was deliberately designed to trade on the goodwill in the Complainantís trademarks and therefore was in bad faith.

The Panel is mindful of the requirement of Paragraph 4(a)(iii) of the Policy that the Respondent must both register and use the domain name in question in bad faith. See, e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001 (January 14, 2000). But the Panel finds that the Complaint here does not allege any facts which would constitute use of any kind. It does allege that Domain Name was registered either to attract the public and divert Internet traffic away from the official Cellular One Group web site or for the purpose of selling the Domain Name to Complainant, but these are mere allegations with no words or deeds of Respondent sited to support them. Indeed, Respondent appears to have taken no action with respect to the Domain Name other than to have registered it, a state of affairs which the Complaint itself admits. In fact, he has ignored both a letter from the Complainant as well as the Complaint in this action. The question is thus presented as to whether no action at all can ever constitute use of a domain name in bad faith.

Paragraph 4(b) of the Policy provides some guidance on this question. It provides:

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

Subparagraphs (ii), (iii) and (iv) are not applicable here. There is no evidence of a pattern of conduct required by (ii), the Respondent is not the competitor of the Complainant as required by (iii) and there is not the use of the Domain Name required by (iv). Thus, the express factors in paragraph 4(b) reduce to whether the circumstances indicate that the Respondent registered the Domain Name in order to improperly sell it.

While in most situations of non-use, it may be impossible to draw any conclusion about a partyís intent to sell, the facts here do permit such an inference. It has been noted that the Domain Name contains only Complainantís coined registered trademark and the country name "China." It would be difficult, perhaps impossible, for Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainantís rights. Accordingly, in the absence of any claim by the Respondent that he intends to do otherwise, it is a permissible inference to conclude, and the Panel does conclude, that subparagraph (i) is applicable to the instance situation.

The Panel, however, also notes that subparagraphs of Paragraph 4(b) are not intended to be the exclusive criterion of bad faith use. The Panel believes that bad faith use can also exist in situations, such as the instant one, where (i) the Domain Name contains in its entirety, and is for all essential purposes only, Complainantís trademark, (ii) such trademark is a coined word, has been in use for a substantial time prior to the registration of the Domain Name and is a well know mark, and (iii) Respondent has alleged no good faith basis for use by it of the Domain Name. Among other things, in these circumstances and absent a transferal, Complainant is deprived of the use of the Domain Name and must always be concerned about the possibility of a confusing future site. And this harm to the Complainant is not balanced by a showing of any legitimate use or potential use by Respondent.

Accordingly, the Panel finds that the Domain Name violates Paragraph 4(a)(iii) of the Policy.

7. Decision

For all of the foregoing reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the trademark and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondentís Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Name {cellularonechina.com} be transferred to the Complainant.

 


 

Thomas D. Halket
Presiding Panelist

Dated: March 10, 2000