WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NTT DoCoMo, Inc. v. ATT Wireless, Inc.
Case No. DBIZ2002-00141
1. The Parties
The Complainant is NTT DoCoMo, Inc. of 11-1 Nagatacho 2-chome, Chiyoda-ku, Tokyo, Japan.
Represented by Mark Hiddleston, of Clifford Chance LLP of 200 Aldersgate Street, London EC1A 4JJ, United Kingdom.
Respondent is ATT Wireless, Inc. of 3755 Monte Villa Parkway, Bothwell, WA 98021, United States of America.
Respondent is represented by William C. Rava, of Perkins Coie LLP, of 1201 Third Avenue, Suite 4800, Seattle, WA 98101-3099, United States of America.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is: <imode.biz>.
The Registrar with which the domain name is currently registered is CommuniGal Communications Ltd., of POB 4602, Rishon Lizcon, Israel 75103.
3. Procedural History
3.1 This is a proceeding under the Start-up Trademark Opposition Policy and Rules ("STOP") for the .Biz domain. Complainant having duly filed notice of an IP claim and intent to file a STOP Complaint, the Complaint was filed with the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on April 26, 2002, electronically, and on April 30, 2002, in hard copy.
3.2 Following timely correction of a formal deficiency in the Complaint on May 17, 2002, the Center checked the Complaint for formal compliance with STOP and the Rules.
3.3 The Center, having determined that all formal requirements had been met, sent the Notification of Complaint and Commencement of Administrative Proceeding on May 22, 2002, by courier, by facsimile and by e-mail to Respondent and to the registrar.
3.4 The communication of the Complaint satisfies the provisions of Rule 2(a) of the STOP Rules and the Panel is satisfied that Respondent received due notice of the Complaint.
3.5 The Administrative Proceeding commenced on May 22, 2002, and the Response was due on June 11, 2002.
3.6 The Response was received by the Center on June 12, 2002.
3.7 Sole Panelist Desmond J. Ryan, having filed the Statement of Acceptance and Declaration of Impartiality and Independence, the Panel was appointed on June 19, 2002.
4. Factual Background
4.1 The domain name was registered with the registrar in question, on March 27, 2002.
4.2 Complainant is a Japanese corporation which claims to be one of the worldís largest telecommunication companies. It claims to have used trademarks IMODE and i-MODE in relation to the provision of mobile phone-based e-mail and internet access services since February 1999.
4.3 Complainant has extensively documented by reference to press articles (Complaint Annex 3) and presentations at exhibitions (Complaint Annex 4). its use of IMODE and iMODE as a trade mark in Japan and many countries outside the United States.
4.4 Complainant has pending applications for registrations of the trademarks IMODE, i-MODE, and IMODE logo. These applications have been filed and are currently pending in many countries throughout the world including Europe, Australia, Asia, Canada and South America. Complainant does not have corresponding applications in the United States.
4.5 There is some confusion as to the identity of Respondent. According to the .BizWhois (Complaint Annex 1) Respondent is ATT Wireless Inc. However, Respondent in its Response asserts that it is "AT & T Wireless Services Inc". Complainant in its Complaint states that Respondent "appears to be connected with AT &T Wireless". Hereafter the expression "Respondent" will be used to include AT & T Wireless Services Inc.
4.6 Respondent states that it was created in 1994 as a result of a purchase by AT &T Corporation of McCaw Cellular Communications and that it split from AT & T Corporation in June 2000. Respondent claims to operate one of the largest digital wireless networks in North America, providing mobile wireless communication services in the United States. At that time Mr. Nobuharu Ono, an executive of NTT Inc joined the Board of Respondent. (Response Annex 5).
4.7 In December 2000, an Investor Agreement was entered into between AT & T Corporation, Respondent and Complainant (Response Annex 6). By paragraph 5.3(b)(vi) of the Investor Agreement Complainant granted to Respondent -
"licenses to all DoCoMo know-how, technology and intellectual property rights related to I-mode mobile multimedia services (up to and including 3G) as it is developed; sole use of the I-mode brand in the USA, and other know-how developed for mobile multimedia services Ö."
5. Applicable Dispute
5.1 This dispute is one to which the STOP applies. Complainant duly registered an IP claim and duly filed the Complaint on receipt of notice of the registration of the domain name. As applicant for the domain name Respondent would have received notice of Complainantís IP claim and details of its trademarks.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the STOP are satisfied, namely that:
(i) the domain name is identical to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
6. The Parties' Contentions
6.1 Complainant contends that:-
(i) Respondent operates in the identical field to Complainant and is well aware of the activities of Complainant;
(ii) the domain name is identical to Complainantís IMODE trademark;
(iii) Complainant is not aware of any evidence of Respondentís legitimate interest in the trademark IMODE;
(iv) Complainant has widely promoted and publicised its IMODE trademark and it is inconceivable that Respondent was not aware of Complainantís interest in the mark; and
(v) a website operating from the domain name will inevitably lead to confusion with services provided by Complainant and will block the potential for Complainant to expand its use of the mark.
6.2 Respondent has made extensive and detailed submissions in response to a Complaint and has supported its submissions by reference to several decided cases under the STOP and the UDRP. For reasons which will become apparent it is unnecessary in this decision to canvas all of those submissions. For the purpose of these proceedings they may be summarized as follows
(i) Respondent does not deny that Complainant has rights in the trademark IMODE outside the United States;
(ii) Complainant does not deny, for the purpose of the proceedings, that the domain name is identical to the trademark IMODE. Respondent has rights and legitimate interests in the domain name and in the IMODE trademark by virtue of its agreement with Complainant and the license thereby granted;
(iii) Complainantís unsupported assertions provide no evidence of bad faith, use or registration;
(iv) The evidence shows that Respondentís actions have been in good faith and in the exercise of the rights and obligations conferred upon it by the Investor Agreement and license granted to it by Complainant;
(v) The STOP is not an appropriate forum to resolve any dispute between the parties as to the rights and obligations in relation to the IMODE trademark under the Investor Agreement;
(vi) Complainant has demonstrated a lack of candor in failing to disclose the relationship between Complainant and Respondent and is in violation of its certification under Rule 3(c)(xiii) of STOP Rules, that the information contained in the Complaint is to the best of its knowledge "complete and accurate".
7. Discussion and Findings
7.1 On its face, the Response having been filed on June 12, 2002, was one day out of time. However, the time of receipt shown, 1:52 a.m. Geneva Time, corresponds to 4.52 p.m. on June 11, 2002, Seattle Time. Rule 2(e)(iii) of the STOP Rules provide that communications via the internet are deemed to have been made on the date that the communication was transmitted. The date, at the point of transmission, was the June 11, 2002, and accordingly, the Panel holds that the response was timely filed.
7.2 The name of the registrant of the domain name is shown in the Complaint and .BizWhois as "ATT Wireless Inc." Respondent, A.T & T. Wireless Services Inc. ("ATTWS") states that it is the Respondent and the evidence shows that this full title is frequently abbreviated to "AT & T Wireless". (See for example Response Annex 3). The Complaint proceeds on the basis that Respondent "appears to be connected with "AT & T Wireless". Complainant has not sought to file supplementary material contesting that ATTWS is the appropriate Respondent. Had it been taken by surprise by Respondentís contention and wished to contest or supply further information it could have done so within the principles generally applied in UDRP cases such as Document Technologies Inc. v International Electronic Communications Inc., WIPO Case D2000 - 0270.
7.3 The Panel proceeds to its decision on the basis of the Response filed by ATTWS.
7.4 Complainant has clearly demonstrated rights in the trademarks i-MODE and IMODE in several countries outside the United States. Respondent does not contest this. The Panel therefore finds that the domain name is identical to a trademark in which Complainant has rights.
Rights and Legitimate Interests
7.5 In the opinion of the Panel, Respondent has clearly established its rights and legitimate interest in the domain name. This is a case in which, as the Respondent submits, both parties have legitimate rights and interest in the domain name. So far as the United States of American is concerned, those rights are, by virtue of the Investor Agreement, exclusive to Respondent. Respondent has produced clear evidence of this in Annex 6 and no contrary evidence has been produced by Complainant. Complainant has therefore failed to satisfy paragraph 4(a)(ii) of the STOP.
Bad Faith Use and Registration
7.6 In light of the Panelís finding in relation to paragraphs 4(a)(ii) of the STOP, it is unnecessary to consider the question of bad faith. The Panel records, however, that the Complaint fails to disclose any evidence of bad faith on the part of Respondent.
Reverse Domain Name Hijacking
7.7 Respondent has not sought a finding of Reverse Domain Name Hijacking. It has however pointed to the lack of candor of Complainant in failing to disclose the relationship between the parties and the rights given to Respondent under the Investor Agreement. It has also drawn attention to the certification made in paragraph 21 of the Complaint, that the Complaint is, to the best of Complainantís knowledge, complete and accurate.
7.8 Notwithstanding that Respondent has not called for a finding of Reverse Domain Name Hijacking, paragraph 15(d) of the STOP Rules is mandatory and imposes a duty on the Panel, if it finds that the Complaint was brought in an attempt at Reverse Domain Name Hijacking, to so state that finding in its decision. The Panel finds that in the light of the relationship which has been shown to exist between Complainant and Respondent, a continuing relationship of relatively recent origin and the subject of substantial publicity, Complainantís failure to have regard to, or even refer to, such a relationship in the Complaint demonstrates bad faith. The Panel therefore finds that the Complaint was brought in an attempt at Reverse Domain Name Hijacking.
8.1 The Panel decides and orders that:
(i) The domain name is identical to the trademark in which Complainant has rights;
(ii) Respondent has rights and a legitimate interest in the domain name;
(iii) Complainant has failed to show that the domain was registered or is being used in bad faith;
(iv) The Complaint is dismissed and no subsequent challenges under the STOP against the domain name shall be permitted.
Dated: June 30, 2002