WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cellular One Group v. Applied Communications, Inc.

Case No. D 2000-1520

 

1. The Parties

Complainant is Cellular One Group ("Cellular"), a Delaware partnership with its principal place of business at 5001 LBJ Freeway, Suite 700, Dallas, Texas, U.S.A. Respondent is Applied Communications, Inc. ("Applied Communications") with its principal place of business at 293 Southwest Cutoff, Northboro, MA 01532, U.S.A.

 

2. The Domain Name and Registrar

The domain names at issue is "cellularone-store.com" registered with Network Solutions, Inc. ("Network Solutions").

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Cellular on November 3, 2000, by email and on November 6, 2000, in hardcopy. The Complainant made the required fee payments. On November 10, 2000, the Center acknowledged the receipt of the Complaint to the Complainantís authorized representative and assigned this matter Case No. D2000-1520.

On November 13, 2000, the Center requested Network Solutions to verify the registration data. By email of November 13, 2000, Network Solutions confirmed that it is the Registrar of the domain name registration and, inter alia, that Applied Communications is the current registrant.

Having verified that the Complaint satisfies the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on November 14, 2000, sent to Respondent, with a copy to the Complainant, a notification of the commencement of the administrative proceeding, together with a copy of the Complaint.

On December 5, 2000, the Center acknowledged to the parties that it had received the Response from the Respondent on December 1, 2000, by email. This response is from: mis "mis@appcomm-ma.com". According to the Network Solutions information, this is an address for the administrative contact of Respondent.

On December 15, 2000, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Presiding Panelist").

After review of the papers filed, the Presiding Panelist requested Complainant to file a Reply to the Response and asked both parties later to clarify the record. Complainant served a reply and both parties filed clarifications.

This decision is based on the information contained in the above documents. Except where disputed, unreliable on their face, or where contradicted by other evidence of record, the statements made therein are deemed to be true.

 

4. Factual Background

This dispute concern Cellularís mark CELLULARONE and CELLONE. Both of these marks have been registered in the United States and internationally for a wide variety of goods and services, including electronic products and telecommunications services. Cellular has engaged in extensive advertising and media campaigns including: radio, television, print publications, the Internet and word of mouth. Cellular has been using the mark CELLULARONE and providing telecommunication services through its licensee since 1983. Cellular has also spent over a billion dollars for advertising to promote these marks.

Respondent registered the domain name "cellularone-store.com" Respondentís registration information with Network Solutions listed the Registrant of "cellularonestore.com" as Applied Communications at 293 Southwest Cutoff, Northboro, MA 01532, U.S.A.

 

5. Partiesí Contentions

Complainant has requested that the domain name be transferred to Complainant because:

(1) the domain name "cellularone-store.com" is identical or confusingly similar to marks in which Complainant has rights;

(2) Respondent has no rights or legitimate interests with respect to the domain names;

(3) Respondentís domain name was registered and used in bad faith;

Respondent alleges it has rights with respect to the domain name "cellularone-store.com". Specifically, it alleges:

(1) Respondent holds a contract with Southwestern Bell Mobile Systems, Inc. ("Southwestern Bell") d/b/a Cellular One to act as an agent for Cellular One service and to use its marks;

(2) Respondent operates and runs "Cellular One Phone Store" stores throughout the New England and Washington/Baltimore markets;

(3) Complainant would prefer that Respondent just have a regional presence as evidenced by an offer letter sent by Complainant; and

(4) Respondentís domain name has not been registered and is not being used in bad faith.

Complainant filed a reply stating that:

(1) any rights that Respondent would have received from Southwestern Bell is limited by the license agreement between Complainant and Southwestern Bell; and

(2) the offer letter referenced by Respondent is a letter to Southwestern Bell confirming the fact that Respondent did not have rights in the domain name and that the domain name should be transferred to Complainant and that a replacement domain name, including a geographic designation for any licensed territory, be registered by Respondent.

 

6. Discussion and Findings

The policy is addressed to resolving disputes concerning allegations of abusive domain name registration.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant relief. They will be addressed separately below, after first addressing jurisdiction.

I. Jurisdiction and Procedure

In addition to jurisdiction over the subject matter of the dispute, it is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent has notice of proceedings that may substantially affect its rights. The policy and the Rules establish procedures intended to assure that Respondents are given adequate notice of the proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

The Registrar identified Applied Communications as the registrant. WIPO served the Complaint on Applied Communications at 293 Southwest Cutoff, Northboro, MA 01532, U.S.A. Respondent filed a response on December 1, 2000, with the Center.

In this case, the Presiding Panelist is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint, of initiation of these proceedings, and allowed sufficient opportunity to Applied Communications to respond. Formal notice was given to Applied Communications. The Panel finds that the Response from mis "mis@appcomm-ma.com" was filed on behalf of Respondent and it is accepted despite its informal nature.

Therefore, this Tribunal has jurisdiction to decide this dispute as presented.

II The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark

Complainant owns numerous domestic and international registrations in the marks CELLULARONE and CELLONE. These distinctive marks have been used by Complainant since 1983, in connection with telecommunication services. Complainant has promoted the service marks with over a billion dollars in advertising.

The domain name "cellularone-store.com" incorporates the entire registered mark. Moreover, the pronunciations of the mark and the first word of the domain name are identical. Although the domain name incorporates another term, the word cellularone is distinguished from the rest of the domain name by being separated by a hyphen.

The similarity between the mark and the domain name is likely to cause consumers to believe that the source or origin of the domain name is sponsored by, endorsed by, approved by, licensed by, connected with, associated with or affiliated with Complainant.

Based on all of the facts, the Panel finds that the Respondentís domain names "cellularone-store.com" is identical or confusingly similar to Complainantís trademarks or service marks. Respondentís use is likely to cause confusion, mistake or deception as to the affiliation, connection or association between Complainant and Respondent and/or the sponsorship or endorsement of Respondentís website by Complainant. Therefore, the requirement of paragraph 4(a)(i) is met.

III. Rights or Legitimate Interests in Respect of the Domain Name

Paragraph 4(c) of the Policy enumerates how a Respondent may establish rights to and legitimate interests in a domain name. These include the following circumstances: (i) before any notice to Respondent of the dispute, Respondentís 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) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate non-commercial 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 asserts that they have rights in the domain name because they hold a legal contract with Southwestern Bell (the "Agreement"). The Agreement allows Respondent to act as an agent for selling Cellular One service and grants Respondent the use of the Cellular marks. Specifically, Respondent states:

Applied Communications currently holds a legal contract with Southwestern Bell Mobile Systems, Inc. d/b/a Cellular One to act as an agent for selling Cellular One service and the use of its marks.

Applied Communications currently operates and runs "Cellular One Phone Store" stores throughout the New England and Washington/Baltimore markets."

Complainant does not directly refute the statement about a legal contract. Rather, it responds that it cannot verify that such a contract exists between Respondent and Southwestern Bell. It states that, "Complainant has only authorized Southwestern Bellís use of the mark." It then says that Complainant has authorized Southwestern Bellís use to conform to Complainantís guidelines and requirements. The requirements are said to dictate that the marks be used with geographic designations that coincide with the geographic region in which the licensees have received a license. If Southwestern Bellís use of the mark is limited, Complainant urges that any grant to Respondent would be subject to the same limitations.

The record taken as a whole does not establish that Respondent has no rights or legitimate interests in the domain name.

Complainantís proofs have not directly refuted Respondentís statement about the relation between Southwestern Bell and Respondent. Complainant discloses only what its contract with Southwestern Bell authorizes. It does not address the legal contract Respondent says it has with Southwestern Bell. Furthermore, Respondent has not taken issue with the statement that Respondent operates many Cellular One Stores.

Complainant has not met the requirement of Paragraph 4(a)(ii) of the Policy. It has not shown that Respondent has no rights or legitimate interests in the domain name.

IV. Bad Faith

The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith."

The Policy provides in Paragraph 4(b):

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), 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 complainantís 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."

No evidence of the foregoing has been presented by Complainant. The only acts of Respondent cited to show bad faith (as distinguished from suppositions based on such things as constructive notice) are, first, that "Respondent refused to transfer the domain name, stating that it had rights in the name from a third party." If Respondent believed it had the rights it asserts it has, there was no bad faith in refusing to transfer the name to Complainant.

Second, Complainant states that bad faith is evidenced by a failure to use the domain name in a bona fide manner. The Reply cites WIPO Panel Decisions that have found inaction to constitute bad faith. (Footnote 1) However, arbitrators have also found that a request to transfer a domain name to a complainant may be denied even though the respondent has made no use at all of the domain name or posted no content on the web site. (Footnote 2) As distinguished from these cases, here Respondent does have an active site. Complainant states: "Respondent uses the CELLULARONE® mark on its site and professes to offer CELLULARONE® goods and services." It then complains that the home page only contains viewable information. It does not allow for actual provision of goods and services. Respondent explained that the site problems arose because it was being created by a college student working part time.

Furthermore, the record contains a letter from Complainantís counsel to "Cellular One Boston"(apparently associated with Respondent or Southwestern Bell). That letter refers to Respondent as "an authorized dealer." The letter, which was written before this proceeding was initiated, makes no reference to bad faith. Rather it appears to concern a good faith dispute about whether Complainantís licensees and their agents must use some type of geographic indicia along with the term Cellular One.

This dispute appears to be more in the nature of a trademark or contract dispute, rather than abusive domain registration, which is the subject of these proceedings. See e.g., Cellular One Group v. Vanguard Cellular Systems, Inc., Case No. D 2000-0268 (where respondent had some rights to use the Cellularone mark at one time, the respective rights and remedies under the license "are beyond the fairly narrow ones provided by the Policy and are for a court to determine") and ABIT Computer Corporation v. Mother-Board Super Store, Inc., Case No. D 2000-0399 (no transfer of domain name where respondent was using the complainantís trademark in selling the complainantís genuine goods).

Considering all of the evidence, I find that Complainant has not shown the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

As to the requested relief in these proceedings, Complainant has proved the necessary element that the name is identical or confusingly similar to its trademark or service mark. Complainant, however, has not shown that Respondent has no rights or legitimate interests in the domain name and that Respondent registered the domain name in bad faith and is using it in bad faith. The remedy requested by Complainant is denied without prejudice. Without prejudice as used herein means as set forth in the decisions Creco Products, Inc. v. Website in Development, D2000-1490 and Grove Broadcasting Co., Ltd. v. Telesystems Communications, Ltd., D2000-0703. The Panel takes no position on the relative rights of the parties to use Cellular One and specifically takes no position on whatever rights Complainant may have in contract or from its trademark rights.

 


 

Thomas L. Creel
Sole Panelist

Dated: February 6, 2001

 


 

Footnotes:

1. See e.g., Revlon Consumer Products Corp. v. Yoram Yosef, WIPO Panel Decision No. D2000-4680 (July 27, 2000).

2. See e.g.; Do the Hustle, LLC v. Monkey Media, LLC, WIPO Panel Decision No. D2000-0625 (Sept. 5, 2000); Meredith Corp. v. CityHome, Inc., WIPO Panel Decision No. D2000-0023 (May 18, 2000); Arcturus Engíg, Inc. v. Arcturus, eResolution Decision No. AF-0156 (May 19, 2000), and 2E Corp. v. Imagisys, Inc., eResolution Decision No. AF-0162 (May 15, 2000).