DECISION

Alltel Corporation v. TEL Internet

Claim Number:  FA0308000179964

PARTIES

Complainant is Alltel Corporation, Little Rock, AR (“Complainant”) represented by Anthony D. Scioli, of Kutak Rock LLP.  Respondent is TEL Internet, Little Rock, AR (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alltelyellowpages.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.Com (hereinafter, “Directnic.Com”).

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 5, 2003; the Forum received a hard copy of the Complaint on August 7, 2003.

On August 6, 2003, Directnic.Com confirmed by e-mail to the Forum that the domain name <alltelyellowpages.com> is registered with Directnic.Com and that Respondent is the current registrant of the name. Directnic.Com has verified that Respondent is bound by the Directnic.Com 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 August 12, 2003, an individual named Martin Snytsheuvel submitted an e-mail to the Forum related to this case.  In that e-mail, Mr. Snytsheuvel noted that he “purchased this domain name legally” but forwarded no substantive response to Complainant’s assertions or any defense based on principles recognized by the Policy. 

On August 18, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 8, 2003 by which Respondent could file a substantive 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@alltelyellowpages.com by e-mail.

Having received no formal 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 September 16, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any formal Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <alltelyellowpages.com> domain name is confusingly similar to Complainant’s registered ALLTEL service mark.

2. Respondent does not have any rights or legitimate interests in the <alltelyellowpages.com> domain name.

3. Respondent registered and used the <alltelyellowpages.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant Alltel Corporation, through its affiliated entity ALLTEL Kansas Limited Partnership, holds rights in the ALLTEL mark, which was registered on the Principal Register of the United States Patent and Trademark Office on February 26, 1985, as Reg. No. 1,322,561.  Complainant and its affiliated entities provide communication and information services internationally in association with the ALLTEL mark, and have done so since 1983.  Complainant’s affiliate ALLTEL Information Services, Inc. holds registration of the <alltel.com> domain name and has conducted business via the associated website since 1995.

Respondent registered the <alltelyellowpages.com> domain name on October 25, 2002 and has used it, according to Complainant, to provide “communications services.”  On July 10, 2003, counsel for Complainant sent Respondent a cease-and-desist letter related to Respondent’s registration and use of the domain name.  Soon thereafter, Respondent changed its mailing address information in the domain name’s registration record to Complainant’s address.  Complainant sent Respondent another cease-and-desist letter, and Respondent responded by e-mail with an offer to sell the disputed domain name and a similar domain name reflecting Complainant’s mark.

DISCUSSION

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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has established its rights in the ALLTEL mark through registration of the mark and continuous use of the mark in commerce.  Respondent's <alltelyellowpages.com> domain name incorporates Complainant’s entire mark and adds the terms “yellow” and “pages.”  As a telecommunications service provider, Complainant’s business bears a strong relationship to these terms.  Given this likely association between Complainant and Respondent’s domain name, the addition of “yellowpages” to Complainant’s mark does not defeat, but rather, enhances the confusing similarity between the ALLTEL mark and Respondent’s domain name.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Policy ¶ 4(a)(i) has been established.

Rights or Legitimate Interests

Complainant has asserted, with evidentiary support, that Respondent has no rights or legitimate interests with respect to the disputed domain name.  Respondent has not come forward to contest Complainant’s allegation, and even the informal response from Mr. Snytsheuvel made no discernible claim of right or legitimate interest in the domain name.  Accordingly, the Panel may presume that Respondent lacks rights or legitimate interests in the <alltelyellowpages.com> domain name.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Furthermore, in deceptively changing the contact information for the domain name and in demanding payment from Complainant for the name, Respondent has demonstrated that it has no rights with respect to the name.  See Am. Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum March 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

It is unclear from the Complaint what sorts of “communications services” Respondent is providing at the disputed domain name, but based on the fame of Complainant’s mark, it would seem nearly impossible for Respondent to legitimately use a domain name reflecting Complainant’s entire ALLTEL mark with terms so closely related for any purpose.  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the <alltelyellowpages.com> domain name, and that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Paragraph 4(b)(i) of the Policy establishes that the registration of a domain name for the primary purpose of selling it to a third party with trademark or service mark rights in the name will satisfy the bad faith registration and use requirements of Policy ¶ 4(a)(iii).  In offering to sell Complainant the disputed domain name and another domain name incorporating Complainant’s mark, Respondent has demonstrated bad faith registration and use as defined in Policy ¶ 4(b)(i).  See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the domain names for sale).

Respondent further demonstrated its bad faith in registering and using the <alltelyellowpages.com> domain name by falsifying its registrant contact information after receiving correspondence from Complainant.  See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that Respondent has acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name).

Thus, Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <alltelyellowpages.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch , Panelist

Dated:  September 22, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/918.html