Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Amtel Systems Corporation, Chester Springs, PA, USA ("Complainant") represented by John S. Child, Jr., of Dann Dorfman Herrell and Skillman. The Respondent is Pacific Amtel Communications, Hermosa Beach, CA, USA ("Respondent").

The domain name at issue is "pacificamtel.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 a panelist in this proceeding.

Bruce E. Meyerson as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 26, 2001; the Forum received a hard copy of the Complaint on January 24, 2001.

On January 30, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "pacificamtel.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 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 February 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 22, 2001 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 postmaster@pacificamtel.com by e-mail.

A timely response was received and determined to be complete on February 20, 2001. Complainant submitted a timely Supplemental Response on February 27, 2001. Respondent submitted supplemental responses on February 27, 2001 and March 8, 2001; these submissions did not comply with the Forum's Supplemental Rule 7 and accordingly have not been considered.

On February 26, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant has been using the mark Amtel in connection with the sale of goods and services in the telecommunications industry for approximately 20 years. In June 2000 Complainant applied for a trademark registration of the name Amtel Systems Corporation. Complainant contends that Amtel is a "fanciful" name and is an "inherently strong mark," exclusively associated with Complainant's goods and services. Complainant alleges that by adding the geographic term "Pacific" to the word "Amtel," Respondent has conveyed the impression that the Respondent is an affiliate or subsidiary of Complainant in the relevant geographic region.

B. Respondent

Respondent claims that the word "Amtel" is used widely throughout the telecommunications industry and therefore its use of the domain name "pacificamtel.com" is not confusingly similar to Complainant's mark. Respondent claims that it is a sub-dealer of Complainant's products and has actively sold and serviced those products.

Respondent sells and services Complainant's products in the western United States. It has registered the domain name "pacificamtel" to facilitate its business activities. Complainant, Amtel Systems Corporation, has not authorized Respondent to use the word "Amtel" in Respondent's domain name; it contends that although it does not hold not a registered mark for the word "Amtel," the word is sufficiently distinctive such that it is an "inherently strong mark." Complainant has not produced evidence indicating that the word "Amtel" is uniquely associated with its products or services. Amtel appears to be a common word within the telecommunications industry, with many diverse businesses using the word in their names. Complainant is not entitled to prohibit Respondent from using the domain name "pacificamtel.com."

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Respondent registered the domain name "pacificamtel.com" with Network Solutions, Inc. ln April 29, 1999. It was not until November 7, 2000 that Complainant sought to register "Amtel" with the United States Patent and Trademark Office.

Moreover, the word "Amtel" is extensively used in the telecommunications industry. A multitude of companies use the word in their name (e.g., Amtel Communications, Inc.; Amtel International Corp.; Amtel Incorporated). Thus, not only does Complainant not have an established trademark in the word "Amtel," but also it is unable to demonstrate common law rights that would derive from an established secondary meaning in the word. Under these circumstances, the use of the word "amtel" in Respondent's domain name "pacificamtel.com" does not interfere with a protected right held by Complainant.

Under these circumstances, the domain name is not identical or confusingly similar with Complainant's business. For example, it has been held that a domain name is confusingly similar if a registered mark is incorporated entirely into a domain name, with only the addition of a geographic region on to the name. E.g., Volkswagen of America, Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (distinctive and registered trademark). Complainant, however, has not demonstrated that the same legally protectible interest in the word "Amtel" as was proved in the word "VW."

Having determined that Complainant has failed to satisfy the first test, it is unnecessary to consider the remaining two elements which it must prove to prevail in this matter.

In accordance with the foregoing Complainant's request to transfer to it the domain name "pacificamtel.com" is denied.