WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ricochet Networks, Inc.
David Peter, a/k/a David Peter Burlini, Newricochet.net and Ricochet Users Association
Case No. D2002-01686
1. The Parties
The Complainant is Ricochet Networks, Inc., a corporation organized and existing under the laws of Delaware, United States of America.
The Respondents are David Peter (a/k/a David Peter Burlini) for Newricochet.com, San Jose, California 95155 Newricochet.net, Orlando, Florida 32805 and Ricochet Users Association California 95044 United Statesof America, 4083713134.
2. The Domain Names and Registrars
Two domain names are in dispute: (1) <newricochet.com>, which was registered on July 27, 2001, with Registrar Go Daddy Domains; and (2) <newricochet.net>, which was registered on September 16, 2001, with Registrar ItsYourDomain.com.
3. Procedural History
The Complaint was submitted electronically on February 19, 2002, and amended electronically on March 7 and 12, 2002. Hard copies of the Complaint and amendments were received on February 11, February 25 and on March 15, 2002. The World Intellectual Property Organization Arbitration and Mediation Center ("the Center") received verification from Registrar Go Daddy Domains on March 7, 2002, and from ItsYourDomain.com on March 8, 2002. On March 20, 2002, the Center completed its formal requirements compliance checklist and issued the Notification of Complaint and Commencement of Administrative Proceedings. On April 9, 2002, the Center received a response by email, which the Center acknowledged on April 15, 2002. There is no indication of receipt of a signed, hard copy of the response. This Panel was appointed on May 16, 2002. The Panel requested a brief extension so that the due date for this decision is June 4, 2002.
4. Factual Background
A. Complainant’s marks, ownership and use thereof
Pursuant to an Asset Purchase Agreement ("APA") dated October 18, 2001, Complainant purchased from Metricom, Inc.; Metricom Finance, Inc.; Metricom Investments DC, Inc.; Metricom DC, L.C.; and Metricom New York, L.C. (collectively, "Metricom") all of Metricom’s intellectual property, including all trademarks and trade names owned by the company. (Annex 3 to the Complaint.) On November 2, 2001, the United States Bankruptcy Court, Northern District of California, San Jose Division, entered an "Order Authorizing Sale of Debtors’ Assets Free and Clear of Liens, Claims, Rights and Interests" (the "Sale Order"), authorizing the sale of substantially all of the assets of the debtors to Complainant. (Annex 4 to the Complaint.) Pursuant to the APA, Metricom transferred to Complainant all of Metricom’s right, title, and interest in and to all intangible property rights, including all trademarks, trade names, logos, service marks, all registrations and applications relating thereto, and the goodwill associated therewith and symbolized thereby, all internet domain names; and all rights of any kind associated with the mark "RICOCHET," including without limitation <ricochet.com> and <ricochet.net>. Each of these assets was included in the Bill of Sale and General Assignment entered into by the parties on November 7, 2001 (Annex 5 to the Complaint.) On that same date, the parties entered into an Intellectual Property Assignment, in which Metricom assigned to Ricochet Networks, Inc., among other things, "all [Metricom’s] registered and unregistered trademarks, service marks, trade dress, logos, trade names, and corporate names, together with all translations, adaptations, derivations, and combinations thereof and including all goodwill associated therewith, and all applications, registrations and renewals in connection therewith." (Annex 6 to the Complaint.)
Complainant is the owner of four (4) registered trademarks for the word "RICOCHET." They are:
1) U.S. Trademark Registration No. 2,040,433 for "RICOCHET (& Design)" for "wireless data communication services via radio" in International Class 38, registered on February 25, 1997. First use date for this trademark is August 15, 1994;
2) U.S. Trademark Registration No. 2,040,403 for "RICOCHET (& Design)" for "radios, modems, computer cable, and computer software for establishing and executing data communications" in International Class 9, registered on February 25, 1996. First use date if August 15, 1994;
3) U.S. Trademark Registration No. 1,987,468 for "RICOCHET" for "radios, modems, computer cable, and computer software for establishing and executing data communications" in International Class 9, registered on July 16 1996. First use date is August 15, 1994; and
4) U.S. Trademark Registration No. 1,987,467 for "RICOCHET" for "wireless data communication services via radio" in International Class 38. First use date is August 15, 1994.
(Annex 7 to the Complaint.)
In addition, Complainant owns four (4) trademark applications that include the word "RICOCHET." They are:
1 & 2) U.S. Application Serial Nos. 76151290, for "RICOCHET READY" and 76/151,011 for "RICOCHET READY (& Design)" for "computer software for accessing computer networks, transmitting data, sound and images over computer networks and for use in facilitating network communications" in International Class 9, filed on October 20, 2000; and
3 & 4) U.S. Application Serial Nos. 76151247, for "RICOCHET READY" and 76/151,242 for "RICOCHET READY (& Design)" for "computer hardware" in International Class 9, filed on October 20, 2000.
(Annex 8 to the Complaint.)
According to the Complainant, prior to its filing bankruptcy, Metricom, Inc. was the leading provider of high-speed, mobile wireless data services. Operating under the brand-name "RICOCHET," the company provided wireless network services that enabled user access to corporate local area networks, wide-area networks, Internet service providers, or personal digital assistants. Metricom provided all of these secure, high-speed, wireless data services over the company’s patented MicroCellular Data Network (MCDN) "RICOCHET" network. From 1998 through 2000, Metricom built out its "RICOCHET" network in seventeen separate municipal areas in the United States. By mid-2001, Metricom’s RICOCHET network in the seventeen general service areas covered approximately 56 million potential subscribers. As of July 2, 2001, when it filed a voluntary petition for protection under Chapter 11 of the United States Bankruptcy Code, Metricom had approximately 50,000 paying subscribers.
Complainant provides products and services relating to computer software, wireless data communications and high-speed broadband and Internet access, and states that the mark has been in continuous use for more than seven years. A visit to <http://www.ricochet.com/> indicates that Complainant currently is offering a high-speed, wire-free Internet access service under the RICOCHET marks, is operating the Denver Test Network, and intends to activate Ricochet service in certain cities later this year.
The mark "RICOCHET" allegedly is famous in the United States. According to the Complainant, those in the high speed internet access community, technology and computer industries have come to associate the mark "RICOCHET" with the goods and services provided by, caused to be provided by, or otherwise associated with or approved by Metricom, and as a result, the mark "RICOCHET" is an extremely valuable asset purchased from Metricom by Complainant.
B. Respondents’ use of the NEWRICOCHET and RICOCHET marks
The Response indicates that "Ricochet Users Association is a group of ‘former workers, modem owners and ‘Ricochet®’ interested individuals’ that want to ‘bring the network back.’" The Response also indicates that "Newricochet.com is a network of modem owners and network users including several Metricom former ‘workers’ and associates." David Peter states he is the founder of the Ricochet Users Association, and current owner of the dispute domain names. He further states that he "was a ‘sales agent’ and ‘modem owner’ since about 1995, starting in Washington State."
Respondents’ website, <http://www.newricochet.com/>, displays the name <newricochet.com> with the subtitle "ricochet®-like services and more." The website describes the sale of communications devices and discusses the provision of "wireless Internet services." Further, within the site, Respondents describe themselves as "an association of ricochet modem owners and users" and claim to own some part of an "abandoned, installed network" formerly belonging to Metricom. Respondents also offer "RicochetCLASSIC," "the service that you know and love." The site contains a page on which consumers can order a year of wireless service.
5. Parties’ Contentions
A. Complainant’s contentions
Complainant contends that the domain names are identical or confusingly similar to the Complainant’s trademarks, the only differences being the addition of ".com" or ".net" and the generic prefix "new." Further, Complainant contends that the goods and services offered by Respondents through the disputed domain names are identical to Complainant’s goods and services offered under Complainant’s registered trademarks, which is likely to result in confusion. Complainant also contends that Respondents have no rights or legitimate interests in the disputed domain names, since they are not authorized or licensed by Complainant. Finally, Complainant contends that Respondents registered and are using the domain names in bad faith, due to their knowledge of the RICOCHET marks prior to registration of the disputed domain names and their unauthorized use of Complainant’s marks in Respondents’ website, in an attempt to attract Internet users to register for wireless internet services to Respondents’ commercial gain.
B. Respondents’ contentions
The Response’s summary states: "This case involves a dispute basically between ‘network competitors’ Aerie/Ricochet Networks dba Ricochet.com and Ricochet Users Association (David Peter, founder) <newricochet.com> and related ‘.net’ domain names." Respondents contend that when Metricom filed for bankruptcy, it abandoned much of the poletop radios and "wired access points" necessary to operate a wireless network. Respondents contend that the RICOCHET mark "maybe ‘has been’ famous", but that Complainant is not using its registered marks and is not currently operating a wireless network. In contrast, Respondents contend that "Newricochet.com has actually acquired title, or control of several network elements (Poletops, WAP, Network Operations)" and that "the modems newricochet.com owns, and those of any of it’s [sic] members ‘ARE RICOCHET® MODEMS." Respondents deny all allegations.
6. Discussion and Findings
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving each of the following: (1) that the domain name is identical or confusingly similar to the Complainant’s mark; (2) that the Respondent has no rights or legitimate interests in the domain name; and (3) that the Respondent registered and is using the domain name in bad faith.
A. The disputed domain names are identical or confusingly similar to the Complainant’s mark
Complainant has purchased and been assigned the RICOCHET marks, and clearly has rights in them. Additionally, it appears from Complainant’s website that the marks are being used for wireless Internet access services.
The primary issue is whether the addition of the prefix "new" to Complainant’s mark RICOCHET suffices to distinguish Respondents’ domain names from Complainant’s mark; I find that it does not.
In Carrefour S.A v. Multigestiones Puertonorte S.L., WIPO Case No. D2000-0837, addition of the elements "new" and "group" to the Complainant’s mark, CARREFOUR, was not sufficient to distinguish the domain name <newcarrefourgroup.com> from the Complainant’s marks. Similarly, in Sony Corporation v. Park Kwangsoo, WIPO Case No. D2001-0167, in which the prefix "new" was added to the Complainant’s mark, the Panel found that "there is no doubt that the use of the domain name <newsony.com> is bound to cause confusion and anyone would relate it with the Complainant. It is, therefore, identical and confusingly similar with the trademark of the Complainant."
In this case, Respondents further add to the possibility of confusion by referring frequently in their website to Complainant’s marks.
Accordingly, I find that the disputed domain names, <newricochet.com> and <newricochet.net>, are identical or confusingly similar to Complainant’s RICOCHET marks.
B. Respondents have no legitimate rights in the disputed domain names
Complainant alleges, and Respondents do not dispute, that Respondents are not licensed nor otherwise authorized to use Complainant’s RICOCHET marks.
Further, Respondents’ incorporation of Complainant’s RICOCHET mark was neither innocent nor merely coincidental. By Respondents’ own admission, (1) "Ricochet Users Association is a group of ‘former workers’, modem owners and ‘Ricochet®’ interested individuals that want to ‘bring the network back’"; (2) "Newricochet.com is a network of modem owners and network users including several Metricom former ‘workers’ and associates"; and (3) David Peter is the founder of the Ricochet Users Association, current owner of the dispute domain names, and "was a ‘sales agent’ and ‘modem owner’ since about 1995, starting in Washington state." Clearly, due to Respondents’ connections with Complainant’s predecessor-in-interest, Respondents knew about Complainant’s rights in the RICOCHET marks, yet still chose to incorporate the RICOCHET mark into Respondents’ mark and domain names, without authorization.
Accordingly, I find that Respondents have no legitimate rights in the disputes domain names.
C. Respondents registered and use the disputed domain names in bad faith
As set forth above, Respondents’ use of Complainant’s RICOCHET mark in the disputed domain names was neither innocent nor merely coincidental. Respondents clearly knew of Complainant’s RICOCHET mark at the time Respondents registered the disputed domain names.
Respondents continue to use the disputed domain names in bad faith. Respondents’ websites offer wireless Internet access services competitive with those offered by Complainant under Complainant’s registered marks. Respondent even admits that "this case involves a dispute basically between "network competitors." Complainant also offers one instance in which a consumer, DeeDee McGann, was directed by Respondent David Peter to "go to [Respondents’] site and ORDER a year of service…" in response to Ms. McGann’s question about whether Respondents were licensed to use the RICOCHET network.
Accordingly, I find that Respondents have registered and used the disputed domain names in bad faith.
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, I find that Complainant has satisfied all of the required elements, and that Complainant’s request for a transfer of the domain names <newricochet.com> and <newricochet.net> is granted. Registrar Go Daddy Domains is directed to transfer <newricochet.com>, and Registrar ItsYourDomain.com is directed to transfer <newricochet.net> to Complainant.
Sandra A. Sellers
Dated: June 4, 2002
1. The Response includes a paragraph indicating
that the originals were mailed on March 28, 2002, by US Postal Service first
class mail, but the file does not contain a signed original.