WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RCN Corporation, RCN Telecom Services, Inc. v. RCN Networks, LLC
Case No. D2006-0927
1. The Parties
The Complainant is RCN Corporation, and RCN Telecom Services, Inc. of Herndon, Virginia, United States of America, represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States of America.
The Respondent is RCN Networks, LLC, of Woburn, Massachusetts , United States of America; represented by Andrew S. Breines, Esq., Menard, Murphy & Walsh, LLP, United States of America.
2. The Domain Names and Registrar
The disputed domain names <gorcn.com> <gorcnnow.com> <gorcnow.com> <rcnInternet.com> <rcnnetworking.com> <rcnnetworks.com> <rcnnetworks.net> <rcnnow.com> and <rcnrescue.com> are registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2006. On July 23, 2006, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On July 24, 2006, Tucows 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 July 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2006. On August 16, 2006, the Respondent advised the Center that an extension to August 17, 2006 was requested to file a response; and on August 17, 2006, Respondent filed a response. There followed supplemental filings by representatives of both Parties regarding the timeliness of the Respondent’s responses.
The Center appointed Nels T. Lippert as the sole panelist in this matter on August 23, 2006. 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 September 8, 2006, in accordance with paragraph 10 (c) of the Rules, the Panel extended the decision due date upto and including September 14, 2006.
4. Factual Background
The Complainants, RCN Corporation, and RCN Telecom Services, Inc. (collectively “Complainant” or “ RCN”) own a number of United States service mark registrations of the mark RCN and marks including the “RCN” formative. Representative examples are Registration No. 2,715,673 registered May 13, 2003 for the mark RCN claiming first use of February 1, 1996 for telephone communication services; Registration No. 2,471,719 dated July 24, 2001 for the mark RCN for residential telecommunications services claiming first use of February 1, 1996; Registration No. 2,752,381 dated August 19, 2003 for the mark RCN Business and design, for telephone communications services claiming first use of July 7, 2002; and Registration No. 2,827,378 dated March 30, 2004 for the mark RCN THE LIVE WIRE and design, claiming first use of February 14, 2003 for telecommunications services. In addition, the Complainant has submitted copies of records of pending applications including the “RCN” formative.
The Respondent RCN Networks, LLC acquired and/or registered the disputed domain names in May and June of 2006.
5. Parties’ Contentions
The Complainant contends that it has used the service marks and trademark incorporating the formative “RCN” in connection with the provision of cable, telephone, Internet access and other related services since at least 1996. The Complainant contends that it offers these services throughout the United States of America under the RCN trademark and through websites that it has registered such as <rcn.com>, and <rcnbusinesssolutions.com>. The Complainant contends that it has registered other domain names incorporating the RCN mark, such as <rcnbusiness.com>, <rcnbusiness.net>, <rcnsmallbusiness.com> and <rcntomorrow.com>.
The Complainant further contends that the Respondent is not affiliated with it in any way and that it has not given any license, consent or other right by which the Respondent could have been or is entitled to use the disputed domain names. The Complainant asserts, upon information and belief, that there was no content found at the disputed domain names until early 2006 following the corporate formation of the Respondent and the dissolution of a purported predecessor in interest, LTSC Networks. According to the Complainant, all of the disputed domain names lead to the same website for the Respondent and feature much of the same content formerly found at the LTSC Networks website.
The Complainant further contends that the services offered by the Respondent through the disputed domain names directly compete with those offered by the Complainant under its RCN trademark.
On June 6, 2006, counsel for the Complainant wrote to the Respondent demanding that all use of the disputed domain names known at that time be discontinued and requesting transfer of the disputed domain names to the Complainant. The Respondent refused to transfer the disputed domain names.
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s RCN trademark because they incorporate the mark in its entirety adding only descriptive terms that fail to distinguish the domain names from those owned by the Complainant. According to the Complainant, the disputed domain names were registered and used in bad faith because the Respondent changed both its corporate name and acquired the domain names in an attempt to trade off of the good will and inevitable consumer confusion resulting from its use of numerous domain names incorporating the Complainant’s trademark. According to the Complainant, bad faith is also demonstrated by untrue and inaccurate statements found in the Respondent’s website to which the disputed domain names resolve, and selection of the Respondent’s corporate name to closely resemble the Complainant’s name, it being inconceivable that the Respondent was not previously aware of the Complainant’s rights to the RCN mark. Moreover, according to the Complainant, bad faith is demonstrated by the Respondent’s use of the disputed domain names for the purpose of promoting and selling services that directly compete with those provided by the Complainant, namely Internet access services for residential and business customers.
The Respondent contends that the disputed domain names are not identical to or confusingly similar to any trademark or service mark in which the Complainant has rights because RCN in the Complainant’s trademarks is an acronym for “residential communications network”, whereas the Respondent’s company name and the disputed domain names are based on the Respondent’s use of RCN as an acronym for “remote computer networking”. The Respondent further contends that confusion is unlikely due to the separate and distinct services provided by the two Parties. According to the Respondent, its business is the repair of computer hardware and software issues remotely through an Internet connection which is not the business of the Complainant.
The Respondent further contends that it has rights or legitimate interests in respect to the disputed domain names because upon deciding on a name for its new business venture, the Respondent determined that the proposed name “Remote Computer Networks” was too cumbersome and made the business decision to use the acronym “RCN Networks LLC” as its business name after confirming that the domain names that the Respondent had developed were still available with the acronym. The Respondent does not dispute that it became aware of the Complainant during its research but because of the differences in respective services, the Respondent concluded that it was entitled to use the RCN acronym.
Furthermore, the Respondent contends that it began using the disputed domain names several months prior to receipt of any notice or communication from the Complainant and offers bona fide services through the domain names which are not confusingly similar to those offered by the Complainant. Furthermore, the Respondent denies that the disputed domain names were registered and are being used in bad faith because the Respondent and the Complainant are not competitors and do not seek access to the same customers. Specifically, the Respondent denies that it registered the disputed domain names for the purpose of selling, renting or otherwise transferring the domain name registrations to the Complainant; to prevent the Complainant from registering them; or to intentionally attract Internet users to the Respondent’s websites by creating confusion as to the source of the Respondent’s websites or services. The Respondent asserts that any confusion was avoided by its hiring a logo designer and developing its websites in such a manner as to avoid even the appearance of such confusion among the Complainant’s customers. Thus, the Respondent asserts that the Complainant has failed to establish the requisite evidence of registration and use in bad faith set forth in the Policy.
6. Discussion and Findings
Although the Respondent’s response was received by the Center after issuance of a notice of respondent default, pursuant to paragraph 10 of the Rules and to ensure that the Parties are treated with the equality and given a fair opportunity to present their cases, the Panel has considered and admitted the Respondent’s response. Therefore, the Panel need not and will not admit nor consider the Parties’ supplemental filings regarding timeliness of the Response.
In order for the Complainant to prevail and have the disputed domain names transferred to the Complainant, the Complainant must prove, with respect to the disputed domain names, all three of the following elements set forth in the Policy paragraph 4(a)(i - iii):
(i) The domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that, for purposes of paragraph 4(a)(iii) above, would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy.
A. Identical or Confusingly Similar
The Complainant has demonstrated, and the Respondent does not dispute that the Complainant has rights in its registered trademarks comprising solely of “RCN” or incorporating “RCN” as a formative. The Complainant has also registered the domain names <rcn.com> and <rcnbusinesssolutions.com> among others. The disputed domain names each incorporate the Complainant’s established trademark in its entirety and adds a common generic term or deletion of a letter. It is well established that the addition of a common generic term to an established trademark in a domain name does not create a new trademark or avoid confusion. America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (January 19, 2001). Furthermore, the deletion or addition of one letter is an insignificant change for the purposes of Policy paragraph 4(a)(i). See, Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (September 5, 2000).
Indeed, the Respondent does not seriously dispute that the disputed domain names are themselves confusingly similar to the Complainant’s trademark rights. Rather, the Respondent argues that because the disputed domain names resolve to a website that offers different products and services from those offered by the Complainant, there should be no likelihood of confusion among consumers. The Panel, however, does not find this argument compelling. The test, for purposes of establishing confusingly similarity under Policy paragraph 4(a)(i) is not the same as “likelihood of confusion,” under U.S. or equivalent law. See, VeriSign, Inc. v. Michael Brook, WIPO Case No. D2000-1139 (March 7, 2001).
Therefore, based upon established precedent dealing with the addition of common generic words to trademarks, and deletion of letters, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
It is not refuted that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s trademarks in a domain name or in any other manner. Furthermore, the Respondent does not contend that it is making a non-commercial or fair use of the disputed domain names to refute the Complainant’s allegations.
However, the Respondent asserts that it began using the disputed domain names several months prior to receipt of any notice or communication from the Complainant and the Respondent offers bona fide services through the domain names at issue which are not confusingly similar to those offered by the Complainant. The record is clear that a number of the disputed domain names were registered by LTSC (apparently the Respondent’s predecessor-in-interest) since February and March 2005 and that all of the disputed domain names were either registered to or transferred to the Respondent in May and June 2006 before any notice of the present dispute. Nor is there any dispute that the Respondent was registered as a limited liability company in the State of Delaware as of March 15, 2006. The Complainant asserts that the Respondent’s business is directly competitive in the same geographical area as the Complainant, yet the Complainant has not established to the satisfaction of the Panel that the Respondent’s business is not bona fide. The Complainant primarily relies upon the Respondent’s history and the failure to register to do business in the State of Massachusetts to create a presumption that the business operated under the disputed domain names is not bona fide. However, there is no evidence presented that the business of the Respondent is not a bona fide business or that the disputed domain names were registered and are used to deliberately divert Internet users interested in the Complainant or its products and services to the Respondent. Indeed, the Respondent’s refusal to transfer the disputed domain names to the Complainant would seem to support the bona fides of the Respondent’s business.
The Panel, therefore, finds that the Complaint must fail because the record demonstrates that before any notice to it of the dispute, the Respondent used the disputed domain names in connection with a bona fide offering of goods or services.
C. Registered and Used in Bad Faith
In view of the finding above, it is not necessary for the Panel to consider and rule on whether the disputed domain names were registered and used in bad faith. Notwithstanding, the Panel concludes, from the evidence presented, that the Complainant has failed to prove that the domain names were registered and used in bad faith. Simple knowledge of the Complainant’s prior trademark rights, which is acknowledged by the Respondent, is not sufficient to prove this necessary element under the Policy. Whether legally sufficient under U.S. law on avoidance of likelihood of confusion, the Respondent has, nevertheless, offered unrebutted justification for its adoption and use of the disputed domain names. Bad faith use of the disputed domain names is also rebutted by the fact that the Respondent’s business appears to be bona fide. Therefore, the Panel finds that the Complainant has failed to establish that the Respondent’s use and registration of the disputed domain names is in bad faith under the criteria set forth in paragraph 4(b) of the Policy.
For all the foregoing reasons, the Complaint is denied.
Nels T. Lippert
Dated: September 14, 2006