WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cellular One Group v. The Design Factory

Case No. D2000-1670

 

1. The Parties

The Complainant is Cellular One Group, a Delaware partnership, represented by Dianah Brown, Esq., of Arter & Hadden LLP of Dallas, Texas, United States of America. The Respondent is The Design Factory of Pentax House, South Hill Avenue, South Harrow, London, Middlesex, HA2 ODE, United Kingdom.

 

2. The Domain Name and Registrar

The disputed domain name is <cellularoneltd.com> and the Registrar is Tucows.Com, Inc. of Toronto, Canada.

 

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center by email and in hard copy on December 1, 2000. The Center acknowledged receipt on December 4, 2000 and on December 5, 2000 sought registration details from the Registrar. On December 12, 2000 the Registrar confirmed that it is the registrar of the disputed domain name; the respondent is the registrant, the Policy applies to the domain name and that the status of the disputed domain name is "on hold." On December 12, 2000 the Center satisfied itself that the Complainant had complied with all formal requirements, including payment of the prescribed fee. On December 13, 2000 the Center printed out a copy of the disputed Webpage, which read, in full: "This domain is registered. Our site is under construction, please visit again" and on that day formally notified the Respondent by post/courier and email of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN. Three attempts to notify the Respondent by fax failed. The email addressed to Postmaster@cellularoneltd.com was returned but the email addressed to the Administrative Contact, Mr. Vasim Memon, at vas@thedesignfactory.co.uk appears to have been delivered.

The formal date of the commencement of the proceeding was accordingly December 13, 2000. The last day specified in the notice for a response was January 1, 2001. On December 13, 2000 Mr. Memon informed the Complainant and the Center that the Respondent purchased the disputed domain name on behalf of a [named] client, who did not intentionally purchase the name for malicious purposes but to promote its own business. The Center informed Mr. Memon this did not constitute a Response.

On January 4, 2001 the Center notified the Respondent that it was in default and on January 17, 2001 the Center notified the parties of the appointment of Alan L Limbury as the administrative panel, Mr. Limbury having submitted a Statement of Acceptance and Declaration of Impartiality. The Center nominated January 30, 2001, as the date by which, absent exceptional circumstances, the panel is required to forward its decision to the Center.

The language of the proceeding was English.

The panel is satisfied that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the Complaintís compliance with the formal requirements; the Complaint was properly notified in accordance with paragraph 2(a) of the Rules; no Response was filed and the single-member administrative panel was properly constituted.

 

4. Factual Background (uncontested facts)

The Complainant owns numerous US and international trademark registrations for CELLULARONE and CELLONE for a variety of goods and services including electronic products and telecommunications services. The marks have been extensively promoted and the Complainant has significant goodwill in them.

The Respondent registered the disputed domain name with the Registrar on July 14, 2000. It has created a Website using <cellularoneltd.com> as the URL but the site is not active.

The Complainant has no relationship with the Respondent and has not authorized it to use either mark in a domain name or at all.

In August and September 2000, the Complainant notified the Respondent that the disputed domain name violated its rights and requested that the name be transferred to the Complainant. The Respondent made no reply.

 

5. Partiesí Contentions

A. Complainant

Identity and confusing similarity

The disputed domain name is identical or confusingly similar to the Complainantís trademarks CELLULARONE and CELLONE.

Illegitimacy

The Respondent has no rights or legitimate interest in the disputed domain name.

Bad Faith

The disputed domain name was registered and is being used in bad faith because:

- the Respondent did not respond to the Complainantís correspondence. Therefore the Respondent has an illegal and harmful intent and purpose and "unclean hands";

- the Respondent had prior constructive knowledge of the Complainantís marks, which are famous. Therefore the registration was done deliberately and for commercial gain:-

(i) to divert customers from the Complainant with intent to confuse the public as to the source of the domain name;

(ii) to trade off the Complainantís goodwill in its famous trademarks;

(iii) to prevent the Complainant from reflecting its marks in corresponding domain names;

(iv) primarily to disrupt the Complainantís business;

(v) to attract Internet users to the Respondentís Website by creating a likelihood of confusion; and

- in Cellular One Group v. Paul Brien,(WIPO case D2000-0028), bad faith use was inferred from the inclusion of the entire trademark in the domain name, and because the domain name could not be used without violating the Complainantís rights.

B. Respondent

No response was filed.

 

6. Discussion and Findings

The complaint

The Complaint appears to be a standard form document imperfectly adapted for use in this case, since it refers to the domain name <gotocellularone.com> (page 2); the registrar Domain Bank (page 7) and to the addition of the word "store" to the Complainantís trademark (page 11), none of which are relevant here. For this reason, and having regard to the absence of a Response, the panel has scrutinized the Complainantís allegations (which have been summarized above to the point of truncation) with particular concern to detect any disparity between them and the extremely bare facts available.

Failure of the Respondent to file a Response

Numerous cases under the Policy have adopted and applied the principle that a Respondentís failure to dispute the allegations of the Complainant permits the inferences that the Complainantís allegations are true and that the respondent knows its Website is misleading. See, for example, Hewlett-Packard Company v. Full System (Case FA 0094637); David G. Cook v. This Domain is For Sale (Case FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (Case FA0094925).

A somewhat broader statement of principle is contained in Reuters Limited v. Global Net 2000, Inc. (Case D2000-0441):

"The Panel draws two inferences where the Respondent has failed to submit a response: (a)"the Respondent does not deny the facts which the Complainant asserts" and (b) "the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts".

In this case these inferences may be more safely drawn having regard to the failure of the Respondent to respond to the Complainantís letters before bringing this administrative proceeding.

The Respondent

The Respondent, being the registrant, is the party bound by the Policy and the party against whom this proceeding is properly brought. In this case the Respondent claims to have purchased the domain name for another to use in its business.

How in such circumstances is a panel to decide the issues of legitimacy and bad faith? A nominee Respondent might be able to establish that it had no prior knowledge of the Complainantís marks, for example, in circumstances in which the "true owner" had that knowledge.

It would be detrimental to the orderly implementation of the Policy to accord any weight to the interposition of an "innocent" nominee as registrant on behalf of the "real owner" of the domain name. The panel concludes that, where no Response has been filed, the usual inferences may be drawn against the Respondent even where the Respondent claims to have registered the disputed domain name on behalf of another person.

Substantive issues

To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the disputed domain name has been registered and are being used in bad faith.

Rights

There is no dispute that the Complainant has rights in the trademarks CELLULARONE and CELLONE.

Identity or confusing similarity

"Essential" or "virtual" identity is sufficient for the purposes of the Policy: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (WIPO case D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO case D2000-0102), holding disputed domain names confusingly similar to the trademark of the complainant, despite the addition of generic words.

US cases have adopted the same approach, see Sportyís Farm L.L.C. v. Sportsmanís Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000) (the differences between the trademark "sportyís" and the domain name <sportys.com> Ė specifically, an apostrophe in the trademark and the addition of .com in the domain name Ė are "inconsequential", such that the domain name is "indistinguishable" from and "certainly Ďconfusingly similarí to the protected mark").

The test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed domain name and the trademark: AltaVista Company v. S.M.A., Inc., (D2000-0927); Gateway, Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) (D2000-0109).

In Microsoft Corporation v. Microsof.com aka Tarek Ahmed (WIPO case D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainantís mark and the mark being strong and immediately recognizable.

Because the Complainantís trademark is so well known, Internet users finding <cellularoneltd.com> on search engines or elsewhere are likely to be misled into thinking the Complainant is the registrant or is otherwise associated with the disputed domain name or, if not misled, at least confused into wondering whether this is so.

The panel finds that the disputed domain name <cellularoneltd.com> is confusingly similar to the Complainantís trademark CELLULARONE. The Complainant has established this element. It is unnecessary for the panel to make a finding in relation to the mark CELLONE.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrantís rights or legitimate interests to a disputed domain name. The Complainant has the onus of proof on this, as on all issues.

The Complainant has not authorized the Respondent to use the CELLULARONE name and mark nor to include it in any domain name.

The Respondent has not asserted that it is commonly known by the disputed domain name and has offered no explanation of his choice of that name. Significantly, the Respondent has not asserted that it was unaware of the Complainantís marks when it registered the disputed domain name. The Respondent has not challenged the Complainantís assertions.

In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (NAF case FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had not used nor developed the domain name for a legitimate non-commercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (NAF case FA94970).

The panel finds that the Respondent cannot have been unaware of the Complainantís mark CELLULARONE when it chose to register the disputed domain name. Its failure to respond to the Complaint leads inevitably to the finding, which the panel makes, that it has no rights or legitimate interest in the disputed domain name.

Bad faith

In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (NAF case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037).

The panel has found that the Respondent must have known of the Complainantís mark CELLULARONE when it registered the disputed domain name and accordingly the panel finds that name was registered in bad faith.

The "use" of a domain name in bad faith does not necessarily mean use on the Internet: Bayshore Vinyl Compounds Inc. v. Michael Ross (eResolution case AF-0187). The Ďuseí requirement has been found not to require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO case D2000-0003); Barneyís, Inc. v. BNY Bulletin Board (WIPO case D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO case D2000-0400); Video Networks Limited v. Larry Joe King (WIPO case D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (WIPO case D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO case D2000-0468).

The failure of the Respondent to respond to the Complaint leads inevitably to the conclusion that the domain name is being used in bad faith.

The panel therefore finds the Complainant has proved this element.

 

7. Decision

Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain name <cellularoneltd.com> to be transferred to the Complainant.

 


 

Alan L Limbury
Sole Panelist

Dated: January 29, 2001