Telular Corporation v. Smart Call

[Indexed as: Telular v. Smart Call]
[Indexed as:]

National Arbitration Forum
Domain Name Dispute Administrative Decision

Case No.:  FA0005000094899
Commenced: 25 May 2000
Judgement: 26 June 2000

Arbitrator: R. Glen Ayers, Jr.

Domain name – Domain name dispute resolution – Registered trademark – Confusingly similar – Misleading website – Intentional diversion – Identical – Mark as part of domain – No rights or legitimate interests – Unjust use of name – Not commonly known – Bad faith registration – Offering of same goods – Mark Acknowledgement.

Complainant holds trademark for “PHONECELL”.  This trademark is used worldwide and is very well known in Europe.  Respondent was distributor for Complainant and used Complainant’s mark.  Even after the relationship ended, Respondent kept using the mark to sell goods on its website “”.  Complainant asks for transfer of domain name.  Respondent did not dispute Complainant’s allegations.

Held, Name Transferred

Domain name in question is identical to Complainant’s registered mark except for addition of “.com” to indicate domain level designation.  Complainant’s mark is first part of domain name and this is an important factor in e-commerce society. 
Respondent has no rights or legitimate interests in the domain name in question.   Respondent is not making use of the mark as a bona fide offering of goods or services nor is there a legitimate noncommercial fair use of the domain name.  Rather, Respondent kept using Complainant’s registered mark after their relationship had ended.  Moreover, Respondent is not commonly known by registered mark.
Respondent registered the domain name in bad faith. Respondent’s purpose of registration was to direct users away from Complainant’s business and to create confusion with Complainant’s mark.    Respondent is offering goods on its website that are the same that Complainant offers under its trademark. 

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases Referred to

Hewlett-Packard Company v. Full System, FA 94637, (Nat. Arb. Forum May 22, 2000)

Hydraroll Limited v. Morgan Corp., FA 94108, (Nat. Arb. Forum April 14, 2000)

Panel Decision referred to

Panelist: - 

The domain name at issue is “PHONECELL.COM”, registered with Network Solutions, Inc. (“NSI”).
R. Glen Ayers

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/25/2000; The Forum received a hard copy of the Complaint 05/30/2000. 
On 05/30/2000, NSI confirmed by e-mail to The Forum that the domain name “PHONECELL.COM” is registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On 05/31/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/20/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. 
On 06/20/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default. 
On June 21, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member Panel, The Forum appointed R. Glen Ayers as Panelist.
Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests transfer of the domain name from the Respondent to the Complainant.

A. Complainant
The Complainant contends that the Respondent has registered a domain name that is identical to and confusingly similar to its trademark registered for and in use by the Complainant.  Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith. 
B.   Respondent
The Respondent submitted no response in this matter.

The Complainant owns the trademark PHONECELL (registered 09/06/1994; No. 1,852,941) for telecommunications hardware systems comprised of cellular interfaces, power supplies, batteries, cellular radio transceivers, charging circuitry, etc.  The Complainant uses the mark worldwide, and accordingly, the mark is well known in Europe and the United Kingdom. 
From November 1998 through November 1999, the Respondent was a distributor for the Complainant and thus used the Complainant’s mark under control of the Complainant.  After this relationship expired, the Respondent continued to utilize the mark by offering goods for sale on the website, PHONECELL.COM.  Since the Respondent registered the domain name, the Complainant has received numerous inquiries involving confusion between the Complainant and Respondent. 
The Complainant communicated to the Respondent that its use of the mark was inappropriate.  In response, the Respondent offered to sell the Complainant’s products in the United Kingdom (the area that is already covered by the Complainant’s United Kingdom office).  The Respondent made no offer to discontinue use of the site.  Currently, when the site is brought up on the Internet, it shows that it is “Under Construction”. 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”) directs that the complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be cancelled or transferred:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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.
The Complainant has offered numerous exhibits in support of its claims, whereas the Respondent has submitted no response in the matter.  The Respondent’s failure to dispute the allegations of the Complainant permits the inference that the use of the Complaint’s mark, PHONECELL, in connection with the Respondent’s website is confusingly similar to the Complainant’s mark.  Further, the Respondent’s failure to respond leads one to believe that the Respondent’s knows its web site is misleading and intentionally diverting business from the Complainant.  See Hewlett-Packard Company v. Full System, FA 94637, (Nat. Arb. Forum May 22, 2000).  Applying the Policy to the issue in this case furthers these inferences.
Identical and/or Confusingly Similar
The Respondent’s domain name is identical to the Complainant’s registered mark except for the addition of the domain name level designation “com”.  When potential clients seek the Complainant’s services on the Internet, the Complainant’s mark is more than likely the first domain name entered.  This association is vital in maintaining a business in today’s e-commerce society.
Rights or Legitimate Interests
The Respondent’s use of the Complainant’s mark is not a bona fide offering of goods and services nor is a legitimate noncommercial fair use of the domain name as required by ICANN Policy  4(c).  The Respondent unjustly continued using the Complainant’s name after the distributorship relationship ended.  In addition, the Respondent is not commonly known by the PHONECELL mark.  ICANN Policy  4(c).  The Complainant registered the mark and has used it in commerce since 1994—long before the Respondent initiated the distributor relationship with the Complainant in 1998.

Bad Faith
The Respondent registered the domain name in bad faith to divert users away from the Complainant’s business, and accordingly create confusion with the Complainant’s mark.
The goods sold on the Respondent’s site are the same as those offered by the Complainant under its trademark. Even though the Respondent acknowledges use of the Complainant’s mark on its site (“Phonecell is a registered trademark of Telular Corp.  Full acknowledgement to Telular & their trademark is given here.”), this recognition, in small print at the bottom of the site, is not enough to overcome the infringement upon the Complainant’s mark.  The Respondent has intentionally retained use of the mark in order to disrupt the Complainant’s business and create a likelihood of confusion with the Complainant’s mark.  See Hydraroll Limited v. Morgan Corp., FA 94108, (Nat. Arb. Forum April 14, 2000).  This is evidence of bad faith.  ICANN Policy  4(b)(iii), (iv).

While Complainant has established all three elements required by the ICANN Rule 4(a), it is the decision of the Panelist that the requested relief be granted, and the domain name transferred to Complainant.

Domain Name Transferred