WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cellular One Group v. Digital Communications, Inc.
Case No. D2001-0189
1. The Parties
The Complainant is Cellular One Group, a Delaware partnership located and doing business at 5001 LBJ Freeway, Suite 700, Dallas, Texas, U.S.A. The Complainant is represented in this proceeding by Dianah Brown, Esq. of Arter & Hadden LLP, 1717 Main Street, Suite 4100, Dallas, Texas 75201, U.S.A.
The Respondent is Digital Communications, Inc., a company located at 222 Beckley Woods Drive, Louisville, Kentucky, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is: "digital1.org".
The registrar for the disputed domain name is Network Solutions, Inc. (NSI) of 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on February 5, 2001. On February 9, 2001, the Center requested that the Registrar NSI check and report back on the registrant for the domain name "digital1.org". On February 12, 2001, NSI reported to the Center that the registrant was the Respondent, Digital Communications, Inc.
On February 21, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent's Response was received by the Center on March 7, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on April 3, 2001, and the Center appointed the Panel on April 4, 2001.
The Panel finds the Center has adhered to the Policy and the Rules in administering this Decision.
This Decision is due by April 19, 2001.
4. Factual Background
The Complainant is a provider of electronics goods and telecommunications services using the DIGITALONE mark. It appears the Complainant has been using this mark in business since the mid-1990's.
The Respondent installs cable and wired phone systems which include PBX and key systems. The Respondent registered the disputed domain name "digital1.org" on July 6, 1998.
The parties exchanged several letters during the year 2000 and early in 2001. At first the Complainant offered to buy the disputed domain name from the Respondent for $500, but the Respondent counter-offered to sell the domain name for $2,000. On January 3, 2001, the Complainant agreed to pay $2,000 for the disputed domain name subject to the conditions set out in the draft contract at Exhibit 5 of the Complaint. The Respondent sent a letter rejecting the Complainant's offer on January 4, 2001, (the Complaint, Exhibit 5).
The Complainant is now seeking transfer of the disputed domain name in this proceeding.
5. The Parties' Contentions
- Through its advertising campaigns and through its licensees providing quality service under the DIGITALONE trademark, Complainant has created monetary value and goodwill in the trademark. The trademark is a symbol of the Complainant's high quality reputation and valuable goodwill, and has become famous and well-known throughout the U.S. and the world.
- The Complainant has no business relationship with Respondent. The Complainant's first use of its mark preceded by over three (3) years Respondent's registration of the disputed domain name.
- Respondent is not known by the name DigitalOne or Digital1.
- The disputed domain name "digital1.org" violates para 4(a)(i) of the Policy because it is confusingly similar to the Complainant's mark: visually, the domain name is almost identical to the Complainant's mark; phonetically, the disputed domain name is identical to the Complainant's mark, and the meaning is identical.
- Because of this similarity in sight, sound and meaning, members of the public who find "digital1.org" on Internet search engines or elsewhere are likely to believe mistakenly that the source or origin of the domain name is Cellular One Group, or that the domain name is sponsored by, or associated with, Cellular One Group.
- The Respondent registered and is using the disputed domain name in bad faith because it wanted compensation to transfer the domain name.
- The Respondent has not developed any active website using the disputed domain name during the three (3) years since the name has been registered.
- The disputed domain name should be transferred to the Complainant.
- The disputed domain name "digital1.org" was meant to be used for wireless telecommunications services.
- The Respondent paid for and had a site almost ready to debut but was sidelined a year ago by the letter from the Complainant demanding the site be turned over to it.
- The Respondent offered to sell the site at a loss but was offered substantially less and thus decided to keep the site.
- The Respondent did not register the disputed domain name for speculation.
- The Complainant is not in the same business as the Respondent so the public cannot be confused.
- The Respondent is not aware of any time limitation on building a website.
- The Respondent does not wish to sell the disputed domain name.
- The Complaint is in bad faith and amounts to an attempt at "reverse domain name hijacking."
- The disputed domain name should not be transferred to the Complainant.
Findings and Discussion
In order for Complainant to prevail and have the disputed domain name transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):
- the 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 domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainant has produced exemplary copies of its several registrations of its DIGITALONE trademark, registered on the principal register of the United States of America, for example registration no. 2,232,452 dated March 16, 1999 in international class 9 for electronic communications products (Complaint, Exhibit 1).
The disputed domain name "digital1.org" certainly is identical phonetically and in meaning to the Complainant's mark. As for visual similarity, the Panel finds it also is great since "1" or "one" written as a number or as a word added to "digital" does not change the whole very much. The Panel finds the disputed domain name is confusingly similar to the Complainant's trademark and that the Complainant has satisfied the Policy at 4(a)(i). (See Cellular One Group v. Paul Brien, ICANN/WIPO Case No. D2000-028, March 10, 2000 involving the disputed domain name "cellularonechina.com")
Legitimate Rights or Interests
The Complainant disavows ever having licensed its trademark to the Respondent or ever having had any business relationship whatever with the Respondent. The Respondent has stated that it plans to use the disputed domain name for a wireless communications business but, three (3) years after registering the disputed domain name, the Respondent has yet to initiate this business (the Response p. 3).
The Respondent argues that there is no set time period within which an owner must begin using a domain name. While it is true the Policy establishes no set time period within which an owner has to begin to use a domain name, nearly three (3) years in the context of the Internet seem to the Panel a vast space of time in which the Respondent could have demonstrated some intent to use the disputed domain name even if it did not actually begin using the name (See Georgia Gulf Corporation v. The Ross Group, ICANN/WIPO Case No. D2000-0218, June 14, 2000, which involved one and one-half years).
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Complainant argues all the bad faith provisions of the Policy at 4b(i-iv). However, the Panel does not see evidence that the Respondent registered the disputed domain to deprive the Complainant of the name and that this was part of a pattern of Respondent's behavior--for one thing, the record only shows that the Respondent owns this one domain name (the Policy at 4b(ii)). Nor does it appear to the Panel that the Respondent registered the domain name to disrupt the Complainant's business (the Policy at 4b(iii); or to attract the Complainant's Internet traffic to a (future) Respondent website for profit (the Policy at 4b(iv).
However, the Panel does find that the Respondent registered the disputed domain name to sell it back to the Complainant or another competitor for far more than the Respondent paid for it in violation of the Policy at 4b(i). The Panel bases this finding on the following facts.
On August 16, 2000 the Complainant offered the Respondent $500 for the disputed domain name but the Respondent rejected this sum (Respondent's letter of November 27, 2000, Complaint Exhibit 5). The Respondent instead requested $2,000 for the domain name and attempted to justify this price by saying it had spent this amount and more in promoting the domain name in preparation for launching its business. There is no evidence whatever that the Respondent spent any money promoting the disputed domain name and the Panel disbelieves the Respondent. The price of registering a domain name is around $100 and thus no where near $500, to say nothing of $2,000.
The Panel finds the record supports the inference that the Respondent was on the point of accepting the $2,000 the Complainant offered, but then rejected it because the Respondent hoped to obtain even more, in violation of the bad faith provisions of the Policy at 4b(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;". (And see Nabisco Brands Company v. The Patron Group, Inc., ICANN Case No. D2000-0032, February 23, 2000).
The Panel finds the Respondent has registered and is using the disputed domain name in bad faith.
Based on ICANN Policy para 4(i) and Rule 15, the Panel finds the Respondent registered a domain name confusingly similar to the Complainant's trademark DIGITALONE, that the Respondent has no legitimate rights or interests in the domain name, and that Respondent registered and was using the domain name in bad faith. Therefore, the Panel orders that the registrar NSI transfer the disputed domain name, "digital1.org" from the Respondent, Digital Communications, Inc., to the Complainant, Cellular One Group.
Dennis A. Foster
Date: April 19, 2001