WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IDT Netherlands, B.V. v. Shellindo.com
Case No. D2003-0299
1. The Parties
The Complainant is IDT Netherlands, B.V., (Puerto Rico Branch), a private limited company duly organized and existing under the laws of the Netherlands, having a place of business at Rio Piedras, Puerto Rico, United States of America.
The Respondent is Shellindo.com, Shellindo Registrar of Beverly Hills, California, United States of America.
2. The Domain name and Registrar
The disputed domain name <unionphonecard.com> is registered with Register.com, Inc. The registration agreement, pursuant to which the domain name is registered, incorporates the Uniform Domain Name Dispute Resolution Policy (the "Policy").
The Respondent registered the domain name <unionphonecard.com> with Register.com on July 22, 2002, according to the WHOIS report provided by the Complainant.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 16, 2003. On April 17, 2003, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On April 17, 2003, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondentís default on May 21, 2003.
The Center appointed Lynda J. Zadra-Symes as the Sole Panelist in this matter on June 6, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On May 29, 2003, the Center received a Supplemental Filing from the Complainant by e-mail. The Center formally acknowledged receipt of Complainantís Supplemental Filing on June 5, 2003, and advised Complainant that the Panel would be advised of receipt of the submission, and that it would be in the Panel's discretion whether to admit or consider it. The information set forth in the proposed submission was considered by the Panel as consistent with the Panel's initial conclusion regarding certain evidence that had previously been submitted by Respondent. The Panel referred to Complainantís Supplemental Filing in reaching its decision.
4. Factual Background
The following facts and statements are derived from the Complaint and its annexed documents, which the Respondent did not dispute and the Panel finds established.
Complainant, IDT (hereinafter "IDT"), is in the business of distributing, marketing, and selling prepaid telephone cards ("phone cards") and providing domestic and international telephone services to the users of those phone cards. IDT is one of the largest and most important purveyors of phone cards in the United States.
IDT offers a variety of different phone cards that are marketed through a main distributor, a subdistribution network, and are ultimately sold to the public through retailers. IDTís distributor level sales were $200 million in 2002, $140 million in 2001, and $30 million in 2000.
Beginning in December 1999, and continuously since that time, IDS has used the mark UNION for phone cards and related services. Through its exclusive distributor, Union Telecard Alliance LLC, (an affiliate of IDTís parent company and controlled by IDTís parent company), IDT markets and sells a wide range of phone cards under the UNION mark. In addition to using the UNION mark alone, IDT also distributes and sells phone cards with other specific state and regional designations such as UNION CALIFORNIA, UNION GEORGIA, UNION NEW JERSEY, UNION TEXAS, UNION CONNECTICUT, UNION FLORIDA, UNION ARIZONA, and UNION SOUTHWEST.
IDT has devoted a substantial amount of time, effort and resources into the promotion, advertising and marketing of phone cards bearing the UNION mark. IDTís UNION phone cards are widely available: over 250,000 retail establishments across the United States carry them. IDTís posters advertising the UNION phone cards are prominently displayed in retail establishments. Complaint Exhibit E. Additionally, IDT uses radio ads to market its various UNION phone cards.
As a result of IDTís sales success, IDTís UNION mark has become associated in the minds of the trade and the public with IDT and has otherwise become indicative of the origin of IDTís phone cards and related services. In 2002 alone, IDTís sales of all UNION phone cards at the main distributor level exceeded $200 million. As a result of the phenomenal sales of the UNION phone cards, the UNION mark has become widely recognized as representing the phone cards and phone services of IDT.
IDT has applied for federal registration of its various UNION marks in the United States Patent and Trademark Office for use in connection with prepaid calling cards and debit card services.
The Panel notes that Application Serial No. 76/387,638 for the UNION mark predates the date of registration of the domain name by the Respondent.
Respondent Shellindo.com is a California entity located in Beverly Hills, California, who registered the domain name on July 22, 2002, over two years after IDT had adopted and used the UNION mark in connection with phone cards. Respondent operates a website at "www.shellindo.com" through which Respondent offered webhosting services.
IDT became aware of Respondentís domain name registration in December 2002, and informed its legal counsel of the registration. IDTís counsel then engaged a third party to contact Respondent to purchase the domain name for a nominal consideration. In an email dated January 25, 2003, Respondent advised IDTís third party representative that Respondent had registered the domain name on behalf of a "client" whom it identified as Mr. Galio Purnomo, and further advised that Mr. Purnomo was "no longer interested in selling the domain."
At least on January 29, 2003, the <unionphonecard.com> domain name was directing Internet users to a website which offered a "union phonecard" as well as other phone cards for sale.
On February 4, 2003, counsel for IDT sent Respondent a letter via Federal Express complaining of Respondentís registration of <unionphonecard.com>. Federal Express were unable to deliver the letter, stating on the Federal Express tracking report: "customer not available or business closed." Counsel for IDT then, on February 14, 2003, e-mailed the letter to Respondent.
Also on February 4, 2003, counsel for IDT sent a letter to Respondentís principal, Mr. Ivan Purnomo, via Federal Express, complaining of Respondentís registration of <unionphonecard.com> and its association with a website offering a "union phone card" for sale. Although Federal Express records indicate Mr. Purnomo signed for this letter upon delivery, neither Respondent nor Mr. Purnomo responded to the letter.
On or about February 25, 2003, IDTís counsel became aware that it was no longer possible to access the websites at "www.shellindo.com" or "www.unionphonecard.com".
IDT filed the Complaint in this proceeding on April 16, 2003, requesting transfer of the domain name to IDT.
On May 28, 2003, counsel for IDT received an e-mail signed by "Shellindo-Jimmy." The e-mail purported to be a communication from Shellindo on behalf of a client. The e-mail stated:
"I apologize for ignoring your email. All of your email that has been sent was forwarded to our client. They asked us to ignore you.
Now, they asked us to contact you if you still want to make a payment deal.
Please let us know so that we can let you along with the payment information."
Counsel for IDT notified the Center of his receipt of the above-mentioned email in a Supplemental Submission forwarded via email to the Center on May 29, 2003.
5. Partiesí Contentions
The Complainant contends that:
- the domain name is identical to a trademark 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; and
- the domain name should be transferred to the Complainant.
The Complainant made the following submissions, which Respondent did not contest:
Since 1999, IDTís extensive use, advertising and promotion of the UNION mark has caused both the trade and the public to associate the mark exclusively with IDTís phone cards and related services. The UNION mark and the goodwill associated therewith are valuable assets of IDTís business.
On February 4, 2003, counsel for Complainant sent letters to Respondent and Respondentís principal, complaining of Respondentís registration of <unionphonecard.com>, advising Respondent that UNION was a valuable trademark of IDT in which IDT had rights, and demanding that the domain name be transferred to Complainant immediately. The letter to Respondent could not be delivered. Although the letter to Mr. Ivan Purnomo was delivered and signed for by Mr. Purnomo on February 6, 2003, Respondent did not respond to the letter. On February 14, 2003, counsel for IDT e-mailed the letter to several addresses at <shellindo.com>, but did not receive any responses to those emails.
Complainant therefore filed its Complaint in this UDRP proceeding.
The Respondent failed to submit a response in accordance with the requirements under the Policy. Thus, Complainantís allegations are deemed to be uncontested.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Each ground is discussed separately below.
A. Identical or Confusingly Similar to Trademark in which the Complainant has Rights
IDT has established that it has developed significant trademark rights in the mark UNION for phone cards. Through extensive use, advertising and promotion throughout the United States continuously since 1999, the UNION mark has acquired distinctiveness as a trademark for phone cards and related services.
The domain name <unionphonecard.com> is confusingly similar to IDTís UNION mark for phone cards. The two relevant parts of the domain name are "union" and "phone card." When the Complainantís mark, UNION, is used in combination with the generic term "phone card," which identifies the goods upon which the mark is used, the domain name and the mark are confusingly similar. See Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, WIPO Case No. D2000-0878 (September 21, 2000); Fossil, Inc. v. NAS, NAF Case No. FA0092525 (February 23, 2000). In this case, the likelihood of confusion is increased because Respondent (through its "client") has used the domain name in connection with the same goods for which Complainant uses its UNION mark - phone cards.
Accordingly, the Panel finds that the domain name is confusingly similar to, and incorporates, the UNION mark, to which the Complainant has rights.
B. Rights or Legitimate Interests
A Respondent may establish its rights or legitimate interests in the domain name, by showing any of the following elements:
(i) Before receiving notice of the dispute, the Respondent used or demonstrably prepared 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 Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain
Respondent has submitted no evidence to support any claim that it has a legitimate right or interest in the domain name.
Respondent has failed to submit any evidence that it has been commonly known by the domain name, and there is no evidence that Respondent is presently conducting any bona fide activities under the domain name. On or about February 25, 2003, IDTís counsel became aware that it was no longer possible to access <unionphonecard.com>. The Panel notes that as of June 18, 2003, it is still not possible to access <unionphonecard.com>.
There is no evidence that Respondent is making a legitimate use of the domain name without intent for commercial gain, nor is Respondent making a fair use of the domain name. On the contrary, the fact that the domain name at one point directed consumerís to a website offering competing phone cards for sale, including a "union phone card," indicates Respondentís intent to misleadingly divert, for commercial gain, consumers searching for information on the Complainantís phone cards advertised and sold under the UNION mark.
Complainant has not licensed or otherwise permitted Respondent or its principal to use the UNION mark or to apply for or use any domain name incorporating the mark UNION. Respondent has no business or any other connection or affiliation with Complainant that would indicate that Respondent has any right, title or interest in the mark UNION in connection with phone cards and related services.
Accordingly, in the absence of any evidence of a legitimate interest of Respondent to register and use the domain name, the Panel finds that Complainant has proved that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that, for the purposes of Paragraph 4(a)(iii), the following circumstances, amongst others, 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 Respondent registered or 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 Respondentís out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís website or location or of a product or service on Respondentís website or location.
Each of the four circumstances in paragraph 4(b), if found, is a separate instance of "registration and use of a domain name in bad faith."
The record reflects evidence that Respondent registered the domain name primarily to disrupt Complainantís business and to attempt to attract Internet users to a website offering competitive phone cards not sold by Complainant. Under the Policy, adopted by Register.com and acknowledged by Respondent in applying to register the domain name, Respondent had a duty to determine if the registration of its domain name infringes or violates anotherís rights. In view of IDTís extensive use, sales and promotion of its UNION mark for phone cards prior to Respondentís registration of the domain name, it is highly unlikely that Respondent and/or its principal were unaware of IDTís UNION mark when Respondent and its principal registered the <unionphonecard.com> domain name and used it in connection with a website offering competing phone cards for sale.
The May 28, 2003, e-mail from Respondent to Complainantís counsel, indicates that Respondent deliberately ignored communications regarding this proceeding and was offering to sell the domain name to the Complainant, the owner of the mark. By deliberately ignoring communications involving this proceeding and offering to sell the domain name to the Complainant, Respondent demonstrated that its primary interest is in selling the domain name to the Complainant, the owner of the UNION mark, for valuable consideration in excess of Respondentís out-of-pocket costs directly related to the domain name.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <unionphonecard.com> be transferred to the Complainant.
Lynda J. Zadra-Symes
Dated: June 20, 2003