WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cellular One Group v. Vanguard Cellular Systems, Inc.

Case No. D2000-0268

 

1. The Parties

The Complainant is CELLULAR ONE GROUP, a Delaware partnership with its principal place of business at 5001 LBJ Freeway, Suite 700, Dallas, Texas 75244, USA. According to Network Solutions, Inc., WHOIS database, the Respondent is Vanguard Cellular systems, Inc., a North Carolina corporation, with its principal place of business at 2002 Pisgah Church Road, Suite 300, Greensboro, NC 27455.

     

 

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

The domain names at issue are {cellular-one.net} and {cellone.net} (both of which will be referred to as the "Domain Name", unless the context indicates otherwise), which Domain Name is registered with Network Solutions, Inc. (the "Registrar").

     

 

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 6, 2000. On April16, 2000, a Request for Registrar Verification was transmitted to the Registrar. On April17, 2000, the Registrar confirmed by reply e-mail that the Domain Name is registered with the Registrar that the Respondent was the current registrant of the name and that the ICANN Uniform Domain Name Disputed Resolution Policy (the "Policy") is in effect. The reply also contained contact information for the Respondent.

The Panel finds that the Policy is applicable to this dispute.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on April17, 2000, which shows that the Complaint is in material 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").

No formal deficiencies having been recorded, on April 19, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of May 8, 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 addresses specified in the Registrarí Whois confirmation, as well as to {postmaster@cellular-one.net} and {postmaster@cellone.net}. In addition, the Complaint was sent by facsimile to the listed fax numbers 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."

On May 10, 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 this Panelís Statement of Acceptance and Declaration of Impartiality and Independence, on May 16, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date was May 29, 2000 1. 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.

Complaint owns numerous U.S. and international trademark registrations and applications for the marks CELLULARONE® and CELLONE®(and for related designs, derivations and logos) for a wide variety of goods and services, including primarily electronic products and telecommunications services. These U.S. and international registrations are hereinafter referred to as the "Trademarks." The Complainantís Trademarks use and registration of the Trademarks predate any use or registration of the Domain Name by the Respondent, are in full force and effect, and have not been abandoned.

Complainant alleges that the Respondent was a trademark licensee of the Complainant from August 2, 1991 until December 31, 1999, but only of CELLULARONE® mark and not of the mark CELLONE® (the "License"). However, a January 24, 2000 letter from Complainantís counsel to Respondent (the "Letter") indicates, at the very least, that Complainant was aware of Respondentís use of {cellone.net} and until the Letter did not object to it. The Letter requested the transfer of all domain names used by Respondent which were the same as or similar to the Complainant's Trademarks, which included more domain names than the Domain Name. Although Respondent has not responded to the letter and has not transferred or taken any action towards transferring the Domain Name, Complainant has not brought any proceeding with respect to these other domain names. Finally Complainant alleges that at the time the license granted to Respondent terminated on December 31, 1999, all rights Respondent had to use the Trademarks, ceased and the Complainant has not granted its permission or consent to the use and appropriation of CELLULARONE® or CELLONE® in Respondentís domain name, or in any manner whatsoever.

     

 

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 trademarks registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the Domain Name, and that the Respondent has registered and are using the Domain Name 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 all 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 Complaint must be rejected. Complainant has not overcome its burden to show that the Domain Name violates either Paragraph 4(a)(ii) or Paragraph 4(a)(iii) of the Policy. By Complainantís own admission, Respondent had some rights under the License at least to one of the Trademarks. The Letter seems to indicate the Complainant at least acquiesced in Respondentís use of the other Trademark. Accordingly, this Panel can not find that the evidence supports the conclusion that either Respondent has or had no legitimate interest in the Domain Name or that it has registered and used them in bad faith. Whatever may be Respondentís rights to the Domain Name or Complainantís remedies provided by the License, and the Panel notes that the License was not included in the voluminous material provided by Complainant, those rights and remedies are beyond the fairly narrow ones provided by the Policy and are for a court to determine.

For example, to violate 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). Paragraph 4(b) of the Policy provides some guidance on Paragraph 4(a)(iii) of the Policy. 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."

None of the Subparagraphs of 4(b) is applicable. Indeed what evidence there is seems to support a conclusion that Respondent registered the Domain Name either as of right under the License or with Complainantís knowledge and tacit approval.

     

 

7. Decision

For all of the foregoing reasons, the Panel decides that Complainant has not overcome its burden to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name or 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 rejects Complainantís request that the registration of the Domain Name {cellular-one.net} and {cellone.net} be transferred to the Complainant. This decision is made without prejudice to Complainant to pursue whatever remedies it may have under the License.

 


 

Thomas D. Halket
Presiding Panelist

Dated: May 30, 2000


 

1. As May 29, 2000, is a holiday in the United States, the country of residence of all of the parties and the Panel, this decision is being issued on May 30, 2000, the next business day.