Telular Corporation v. Smart Call
[Indexed as: Telular v. Smart Call]
[Indexed as: phonecell.com]
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 Complainants mark. Even after the relationship ended, Respondent kept using the mark to sell goods on its website phonecell.com. Complainant asks for transfer of domain name. Respondent did not dispute Complainants allegations.
Held, Name Transferred
Domain name in question is identical to Complainants registered
mark except for addition of .com to indicate domain level designation.
Complainants 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 Complainants
registered mark after their relationship had ended. Moreover, Respondent
is not commonly known by registered mark.
Respondent registered the domain name in bad faith. Respondents
purpose of registration was to direct users away from Complainants business
and to create confusion with Complainants 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
--
Ayers,
Panelist: -
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is PHONECELL.COM, registered with Network
Solutions, Inc. (NSI).
PANELIST(s)
R. Glen Ayers
PROCEDURAL HISTORY
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 ICANNs 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 Respondents 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 Complainants 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 Forums Supplemental Rules and
any rules and principles of law that the panel deems applicable, without
the benefit of any Response from the Respondent.
RELIEF SOUGHT
The Complainant requests transfer of the domain name from the Respondent
to the Complainant.
PARTIES CONTENTIONS
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.
FINDINGS
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 Complainants 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 Complainants products in the United Kingdom (the area that is already
covered by the Complainants 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.
DISCUSSION
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
Respondents failure to dispute the allegations of the Complainant permits
the inference that the use of the Complaints mark, PHONECELL, in connection
with the Respondents website is confusingly similar to the Complainants
mark. Further, the Respondents failure to respond leads one to believe
that the Respondents 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 Respondents domain name is identical to the Complainants registered
mark except for the addition of the domain name level designation com.
When potential clients seek the Complainants services on the Internet,
the Complainants mark is more than likely the first domain name entered.
This association is vital in maintaining a business in todays e-commerce
society.
Rights or Legitimate Interests
The Respondents use of the Complainants 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 Complainants 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 1994long 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 Complainants business, and accordingly create confusion
with the Complainants mark.
The goods sold on the Respondents site are the same as those offered
by the Complainant under its trademark. Even though the Respondent acknowledges
use of the Complainants 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 Complainants
mark. The Respondent has intentionally retained use of the mark in
order to disrupt the Complainants business and create a likelihood of
confusion with the Complainants 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).
DECISION
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.
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