WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cellular One Group v. Wingspan, Inc.

Case Number: D2000-1290

 

1. The Parties

Complainant is Cellular One Group ("Complainant" or "Cellular One"), a Delaware partnership, located and doing business at 5001 LBJ Freeway, Suite 700, Dallas, Texas, United States of America.

Respondent is Wingspan, Inc., with a mailing address of P.O. Box 716, Chester, New Jersey, 07930 United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <ecellularone.com>. The registrar is Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 United States of America.

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant via email on September 29, 2000. On October 3, 2000, the Center received hardcopy of the Complaint. The Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On October 6, 2000 after sending a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

On October 12, 2000, the Complaint requested permission to file an Amended Complaint.

The Center received the Amended Complaint of Complainant via email on October 14, 2000. On October 20, 2000, the Center received hardcopy of the Amended Complaint. The Center sent an Acknowledgment of Receipt of Complaint to Complainant.

On October 24, 2000, the Center verified that the Amended Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

Commencement of Administrative Proceeding to the Respondent together with copies of the Amended Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On November 15, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On November 24, 2000 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

Cellular One owns numerous U.S. and international trademark applications and registrations for the mark CELLULARONE and CELLONE and for related designs, derivations and logos for a wide variety of goods and services, including electronic products and telecommunications services. These U.S. and international applications and registrations are hereinafter referred to as the "Trademarks." The Complainantís Trademarks predate any use or registration of the Domain Name <ecellularone.com>, are in full force and effect, and have not been abandoned.

In an effort to promote the goods and services provided by its licensees under the brand name CELLULAR ONE and CELLONE, Complainant has engaged in advertising and media campaigns including print publications and word of mouth. Cellular One has a significant presence on the Internet. Its official Internet web site is at www.cellularone.com. Through its ongoing and costly media and advertising campaigns, and by its licensees providing service under the Trademarks, Complainant has created monetary value, reputation and goodwill in the Trademarks.

The Registrarís record for <ecellularone.com> was created on February 28, 1999, after the registrations and applications comprising the Trademarks.

Cellular One is not related to Respondent, has no contracts or agreements with Respondent, has no business relationship or transactions with Respondent. Cellular One has not granted its permission or consent to the use and appropriation of CELLULARONE or CELLONE in Respondentís domain name, in any manner whatsoever.

 

5. Partiesí Contentions

Complainant contends that it has registrations and applications with the United States Patent and Trademark Office for CELLULARONE and CELLONE and the variants comprising the Trademarks. Complainant further contends that the Domain Name is identical with and confusingly similar to the Trademarks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

Respondent has not contested Complainantís assertion that Complainant has the registrations and applications comprising the Trademarks or that the Domain Name is identical with and confusingly similar to the Trademarks.

Respondent does not contest Complainantís contention that Respondent has no rights or legitimate interest in the Domain Name.

Respondent does not contest Complainantís contention that the registration and use of the Domain Name is in bad faith.

 

6. Discussion and Findings

Even though Respondent has not filed a Response or offered evidence contesting Complainantís assertions, the Sole Panelist will review the existing proof to determine whether Complainant has established the necessary elements of its claim.

Identity or Confusing Similarity.

Complainant contends that it has registrations and applications with the United States Patent and Trademark Office comprising the Trademarks. Complainant further contends that the Domain Name is identical with and confusingly similar to the CELLULARONE and CELLONE marks and the variants contained in the Trademarks pursuant to the Policy paragraph 4(a)(i).

Complainant has sufficiently proven the existence of the registrations and applications comprising the Trademarks. Furthermore, this proof is uncontested. Therefore, the Sole Panelist finds that Complainant has the prior right to use the mark CELLULARONE and CELLONE and the variants comprising the Trademarks.

Complainant asserts that the Domain Name is identical with and confusingly similar to the CELLULARONE and CELLONE marks and the variants contained in the Trademarks. Visually, the Domain Name <ecellularone.com> contains the entirety of the CELLULARONE and CELLONE marks. Phonetically, the Domain Name is the same as the Trademarks. The speaker has no alternative but to say "cellularone" as the

main part of the pronunciation. The Domain Name has the same commercial meaning to the public as the Trademarks. It means nothing other than the business associated with Cellular One. "Cellularone" and "Cellone" are not dictionary words. Because of this similarity in sight, sound and meaning, members of the public who find <ecellularone.com> on Internet search engines or elsewhere are likely to believe falsely and mistakenly that the source or origin of the domain name is Cellular One, or that the Domain Name is sponsored by, endorsed by, approved by, licensed by, connected, associated or affiliated with Cellular One.

But for the "e" at the beginning, the second level domain name "ecellularone" is identical with Complainant's CELLULARONE mark. The remaining alphanumeric characters are identical and are arranged in identical order. The addition of a letter "e" by Respondent is not sufficient to distinguish the domain name from Complainant's name and marks in the minds of consumers. The letter "e" is frequently added to the beginning of widely recognized marks to identify a company's "electronic" or web-based business. At least one panel of arbitrators from this forum has in the past found confusing similarity in a situation remarkably similar to the present one. See Nike, Inc. v. Farrukh Zia, WIPO Case No. D2000-0167 (holding "enike.com" and "e-nike.com" to be confusingly similar to Complainant Nike, Inc.'s mark NIKE and its primary domain name nike.com).

In addition, the Domain Name is confusingly similar in that the offending domain name is misleading. The Domain Name <ecellularone.com> suggests an association or relationship to Complainant which does not exist and, if used by parties other than Complainant, will cause confusion in the marketplace. See Nike, Inc., WIPO Case No. D2000-0167, id.

Therefore, the Sole Panelist finds that the Domain Name is identical with and confusingly similar to the CELLULARONE and CELLONE marks and the variants comprising the Trademarks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the CELLULARONE and CELLONE marks or their variants comprising the Trademarks.

The Policy paragraph 4(c) allows three nonexclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has offered no evidence in support of any of the three methods provided in the Policy paragraph 4(c), nor, for that matter, of any other method which may be relevant.

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth nonexclusive four criteria for Complainant to show bad faith registration and use of domain names:

(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.

The Sole Panelist finds that the allegations of Complainant are insufficient to establish any of the four nonexclusive criteria set forth in the Policy paragraph 4(b).

The four criteria established by the Policy paragraph 4(b) are nonexclusive. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One such factor is that Respondent has made no use of the Domain Name. Cellular One alleges that Respondent has not developed any active web site at <ecellularone.com>or made any other use of the Domain Name. Respondent has not contested these allegations. Such failure to use a domain name in a bona fide manner has been found to be a factor supporting bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000) (citing cases where panel found inaction constitutes bad faith).

In addition, on or about September 1, 1999, Complainant notified Respondent that the Domain Name violated the U.S. intellectual property rights of Complainant, and requested that Respondent cease and desist this conduct and transfer the name. On December 21, 1999, Complainant sent a reminder letter to Respondent making this request a second time. On April 4, 2000, Complainant attempted, for a third and final time, to get Respondent to voluntarily transfer the domain name to Cellular One, and avoid the time and expense of a WIPO proceeding. Respondent has ignored Complainantís request to transfer ownership of the Domain Name. Failure to respond to a complainantís efforts to make contact provides "strong support for a determination of Ďbad faithí registration and use." Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000).

Complainant alleges that Respondent had actual knowledge of the Trademarks and their fame, and nevertheless proceeded to register the Domain Name. Complainant further alleges that Respondent had constructive knowledge of Complainantís prior rights in the Trademarks because of the registration of the CELLULARONE and CELLONE marks. Respondent does not contest these allegations. Actual or constructive knowledge of the Complainantís rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000) (Respondentís knowledge of complainantís mark at the time of registration of the domain name suggests bad faith).

Complainant cites as precedent and authority, Cellular One Group v. Paul Brien, D2000-0028 (WIPO March 10, 2000). In that case, Complainant filed a WIPO complaint against the Registrant of domain name <cellularonechina.com>. The WIPO panel agreed with Complainant, based on facts essentially the same as those set forth in this Complaint, that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of <cellularonechina.com>, because the domain name included Complainantís entire trademark. In light of Cellular Oneís trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ∂ 7. The Sole Panelist concludes that, in the instant case, it is a likewise permissible inference to conclude bad faith use of the domain name since Respondentís domain name is composed entirely of Complainantís trademark and the impossibility of conceiving of a legitimate use of the Domain Name.

Therefore, the Sole Panelist finds that, independent of the four nonexclusive criteria in the Policy paragraph 4(c), Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Name <ecellularone.com> is identical with and confusingly similar to the CELLULARONE and CELLONE marks and the variants constituting the Trademarks, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Name be transferred to Cellular One Group.

 


 

Richard W. Page
Sole Panelist

Dated: December 9, 2000