American Installation Company, Inc. d/b/a NationLink Wireless v. Missouri-Wide Cellular
Claim Number: FA0510000583008
Complainant is American Installation Company, Inc. d/b/a NationLink Wireless (“Complainant”), represented by Christopher A. Sloan, of Boult, Cummings, Conners & Berry, PLC, 1600 Division Street, Suite 700, Nashville, TN 37203. Respondent is Missouri-Wide Cellular (“Respondent”), 6225 Mid Rivers Mall Dr., St. Charles, MO 63304.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationlinkwireless.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 24, 2005.
On October 25, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <nationlinkwireless.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 27, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 16, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 22, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
A late Response was submitted by Respondent on November 23, 2005 and was determined to be deficient. The Panel has chosen to consider this Response in its Decision and directed Respondent to submit additional information to clarify and support its claim.
Respondent provided additional information on December 7, 2005. Complainant responded to this additional information on December 19, 2005. All communications from the parties were received and considered by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
[a.] The Disputed Domain Name is identical to or confusingly similar to a mark in which Complainant has rights.
[i.] Complainant has rights in the mark NATIONLINK.
Complainant is the owner of the two U.S. registered trademarks identified above. Details of Complainant’s U.S. registrations are attached hereto as Exhibit 2.
[ii.] The Disputed Domain Name is identical or confusingly similar to Complainant’s mark.
The Disputed Domain Name, nationlinkwireless.com, includes the Complainant’s Mark, NATIONLINK, and utilizes this domain name to sell goods and services that are identical to those offered by Complainant under the NATIONLINK mark. The addition of “wireless” to “nationlink” in the Disputed Domain Name does nothing to alleviate the confusion, because (1) both Complainant and Respondent provide products and services in the wireless communications industry, and (2) both Complainant and Respondent do business under the name NationLink Wireless, which is identical to the Disputed Domain Name. Furthermore, “wireless” is a generic term that relates to the business of the Complainant, and it is well established under the Policy that the addition of such a generic term in fact strengthens the possible confusion. See, e.g., L.F.P., Inc v. Hotpics International, FA0204000109576 (Nat. Arb. Forum May 24, 2002).
[b.] The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name
[i.] Respondent has not used, and is not using, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with any bona fide offering of goods or services.
The use of a domain name that infringes on trademark rights cannot be bona fide, and is therefore incapable of giving rise to a legitimate right or interest. See Nasdaq Stock Mkt. Inc. v. Green Angel, D2001-1010 (WIPO September 30, 2001). Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark. Complainant connects customers purchasing devices with wireless carriers such as Nextel and T-Mobile, which companies provide the wireless service for the device purchased. Respondent’s website also provides links to wireless carriers such as Nextel and T-Mobile to connect customers purchasing a device to a wireless carrier that offers services for the device purchased. Based on the foregoing, Respondent is engaging in a business that directly competes with the Complainant and Respondent is using the Complainant's Mark to engage in such competition. Usage of the Disputed Domain Name in this fashion is not a “bona fide” offering.
Lastly, Respondent failed to make any good faith inquiries to whether its use of the domain names would infringe the rights of Complainant; this is an element of bad faith. See Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636, (Nat. Arb. Forum March 13, 2000). Respondent should have searched the US trademark registry prior to using the Disputed Domain Name. In this case, had Respondent done so, Respondent would have quickly discovered Complainant’s registered trademarks. Thus, Respondent at least had constructive knowledge, and perhaps even actual knowledge, of Complainant’s rights. Respondent’s actions in establishing a web site using Complainant’s trademark to point to Respondent’s website does not constitute a bona fide offering of goods or services, and in fact provides evidence of Respondent’s bad faith in registering and using the Disputed Domain Name.
[ii.] Respondent is not commonly known by the domain name.
The Disputed Domain Name is not in any way similar to Respondent’s corporate name as reflected on the WHOIS results for the Disputed Domain Name.
[c.] Respondent registered and is using the Disputed Domain Name in bad faith.
[i.] Redirecting Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.
By using a domain name that is confusingly similar to that of Complainant’s registered trademark, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site. Respondent’s intention may be determined by common sense inferences from circumstantial evidence. See New York Times Co. v. New York Time Internet Servs., D2000-1072 (WIPO December 5, 2000).
As was pointed out in several WIPO decisions, registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy (see NetWizards Inc. v. Spectrum Enters, (WIPO D2000-1768); Edmonds.com, Inc. v. Ult. Search Inc., (WIPO D2001-1319)). The Disputed Domain Name links Internet users to the Respondent, a direct competitor of Complainant. Based on this fact alone, Respondent's registration and use of the Disputed Domain Name is in bad faith because Respondent is using the Disputed Domain Name in a business that directly competes with the Complainant.
[ii.] Respondent had constructive notice, and perhaps actual notice, of Complainant's Mark, and therefore Respondent's registration and use of the Disputed Domain Name is in bad faith.
Complainant's application to register Complainant's Mark was filed in March 1999, nearly a year prior to Respondent registering the Disputed Domain Name. Complainant's registration of its mark issued in October 2000, also prior to Respondent registering the Disputed Domain Name. Therefore, at the time of Respondent's registration of the Disputed Domain Name, Respondent could very easily have discovered Complainant's Mark by conducting a search of the USPTO web site that would have taken less than thirty seconds to complete. Respondent's failure to search one of the largest and most easily accessible public trademark databases in the world is evidence that Respondent registered and is using the Disputed Domain Name in bad faith. In the alternative, if Respondent did in fact conduct such a search and thus became aware of Complainant's Mark, the evidence of bad faith is even stronger.
[iii.] Respondent abruptly discontinued any efforts to negotiate a settlement of this dispute.
Starting in February 2004, after several months of discussions, Respondent ceased responding to any communications from Complainant or Complainant’s counsel regarding this dispute. This abrupt silence is further evidence of Complainant’s bad faith.
For all the above-stated reasons, the Respondent is guilty of registering and using the Disputed Domain Name in bad faith in violation of the Policy.
B. Respondent appeared pro se and claimed to be using the NationLink Wireless mark.
Complainant, American Installation Company, Inc. d/b/a NationLink Wireless, holds a registered trademark for its NATIONLINK mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,392,947 issued October 10, 2000 and filed March 31, 1999). Complainant’s trademark registration for this mark is for “telephone communications services, namely, cellular telephone and radio pager transmission services” and “wholesale retail stores featuring cellular telephones and radio pager.”
Complainant is engaged in the business of connecting customers with pre-existing goods or services with the providers of companion goods or services.
Respondent was formed May 30, 1995 by a filing with the Missouri Secretary of State. Respondent registered the <nationslinkwireless.com> domain name on February 17, 2000. Respondent’s domain name resolves to a website the provides links to wireless carriers to connect customers who purchase wireless devices to a wireless carrier who provides services for the device purchased.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the NATIONLINK mark through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶4(a)(i) dates back to Complainant’s filing date.”).
Respondent’s <nationlinkwireless.com> domain name is confusingly similar to Complainant’s mark because the domain name fully incorporates Complainant’s NATIONLINK mark and adds the descriptive term “wireless,” which has an obvious connection to Complainant’s business. Such a change is not enough to overcome a finding of confusing similarity pursuant to Policy ¶4(a)(i). See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity); see also Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
The addition of the top-level domain “.com” is irrelevant in determining whether the <nationlinkwireless.com> domain name is confusingly similar to Complainant’s mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
The Panel finds Policy ¶4(a)(i) established.
Complainant asserts Respondent does not have rights or legitimate interests in the <nationlinkwireless.com> domain name. When a complainant establishes a prima facie case pursuant to Policy ¶4(a)(ii), the burden shifts to the respondent to prove that it has rights or legitimate interests.
Respondent uses the tradename NationLink Wireless. It provided copies of the following documents to establish this fact:
· Their preprinted checks, which show their name as Missouri-Wide Cellular and Paging, Inc. d/b/a NationLink Wireless.
· 2005 Missouri Sales Tax Return.
· St. Charles County June 22, 2004 certificate of occupancy.
Respondent is commonly known by the <nationlinkwireless.com> domain name. The Panel concludes Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii).
The evidence is not sufficient to determine who has the better rights to the nationlink mark. This will require a full evidentiary hearing (including taking testimony and cross-examination) and is not suited to the summary proceedings used in the UDRP.
The Panel finds Policy ¶4(a)(ii) has not been satisfied.
The Panel finds Respondent has not registered and used the <nationlinkwireless.com> domain name in bad faith pursuant to Policy ¶4(b)(iii) because Respondent has rights to the mark.
The Panel finds Policy ¶4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: December 30, 2005