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Generic Top Level Domain Name (gTLD) Decisions |
Nortel Networks Limited v. Dimitar
Dimitrov d/b/a ICDSoft.com
Claim
Number: FA0411000360565
Complainant is Nortel Networks Limited (“Complainant”),
represented by Lisa Peller London, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC
20005. Respondent is Dimitar Dimitrov d/b/a ICDSoft.com (“Respondent”), 39-41 Tzvetna Gradina St., Sofia, BG
1421, BULGARIA.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <nortelusa.com> and <nortelusa.net>,
registered with eNom.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
2, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on November 3, 2004.
On
November 2, 2004, eNom confirmed by e-mail to the National Arbitration Forum
that the domain names <nortelusa.com> and <nortelusa.net>
are registered with eNom and that Respondent is the current registrant of the
names. eNom has verified that Respondent is bound by
the eNom 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
November 4, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 24, 2004 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@nortelusa.com, and
postmaster@nortelusa.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
December 6, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nortelusa.com> and
<nortelusa.net> domain names are confusingly similar to Complainant’s
NORTEL mark.
2. Respondent does not have any rights or
legitimate interests in the <nortelusa.com> and
<nortelusa.net> domain names.
3. Respondent registered and used the <nortelusa.com>
and <nortelusa.net> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Nortel Networks Limited, is a Canadian corporation that has provided telephony,
data, wireless and wireline products
and solutions for consumers under the
NORTEL mark since the mid-to-late 1980s, and currently employs approximately
70,000 employees
worldwide. Complainant first filed a trademark application for
the NORTEL mark in Canada in 1975, and since that time has obtained
several
additional registrations for the mark, including with the United States Patent
and Trademark Office (“USPTO”) (e.g. U.S. Reg. No. 2,001,714, issued
September 17, 1996). Complainant has also registered its NORTEL mark as a
design mark with the USPTO
(U.S. Reg. No. 2,184,321, issued August 25, 1998),
which consists of the word NORTEL with a stylized, astrolabe design
representing
the letter “o” in Complainant’s mark. Complainant additionally
uses the NORTEL mark online at the <nortelnetworks.com> domain
name,
which provides information about its various goods and services.
Respondent
registered the <nortelusa.com> and <nortelusa.net>
domain names in August 2002. Respondent
is the hosting company for Protech, an unauthorized reseller of Complainant’s
products that claims to sell new and refurbished
NORTEL goods. Respondent uses the disputed domain names to
direct Internet users to Protech’s commercial website that sells
telecommunications goods
apparently manufactured by Complainant.
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.
Complainant has
established that it has rights in the NORTEL mark through registration with the
USPTO and through continuous use of
its mark in commerce. See Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently
distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO
Mar. 5, 2002) (finding that Panel decisions have held that registration of a
mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden of
refuting this assumption).
Respondent’s <nortelusa.com>
and <nortelusa.net> domain names are confusingly similar to
Complainant’s mark. Respondent added
the abbreviation “usa” to Complainant’s entire NORTEL mark. The abbreviation “usa” is likely to be
understood by consumers as a geographic identifier for the United States of
America. The Panel reasonably infers that
Internet users may believe that the websites located at the <nortelusa.com>
and <nortelusa.net> domain names are run by American branches or
affiliates of Complainant. Thus,
Respondent’s addition of the abbreviation “usa” to Complainant’s mark does not
materially change the impression of the domain
names. Consequently, the Panel finds that the geographic identifier
“usa” does not significantly distinguish Respondent’s domain names from
Complainant’s mark under Policy ¶ 4(a)(i).
See Sunkist Growers, Inc.
v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names
<sunkistgrowers.org>, <sunkistgrowers.net> and
<sunkistasia.com>
are confusingly similar to Complainant’s registered
SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark);
see
also InfoSpace, Inc. v. domains Asia Ventures, FA
198909 (Nat. Arb. Forum Nov. 10, 2003) (finding that “Respondent's
addition of the letters ‘uk’ to Complainant's mark does not materially change
the impression of the domain
name” and is confusingly similar to the mark under
the Policy).
Additionally,
Respondent’s <nortelusa.com> and <nortelusa.net>
domain names are confusingly similar to Complainant’s NORTEL mark because the
mere addition of generic top-level domains does not
negate the confusing
similarity between Respondent’s domain names and Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Fed’n of
Gay Games, Inc. v. Hodgson,
D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> is identical to Complainant's registered trademark
GAY
GAMES); see also Little
Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
(finding that <mysticlake.net> is plainly identical to Complainant’s
MYSTIC LAKE
trademark and service mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of the complainant’s reasonable allegations and inferences
as true); see also Wells
Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003)
(finding that the failure to respond to a complaint allows a panel to make
reasonable inferences
in favor of a complainant and accept the complainant’s
allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain names. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Charles Jourdan Holding AG v.
AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate
interests where (1) Respondent is not a licensee of Complainant;
(2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the
domain name in
question).
Additionally,
Respondent uses the disputed domain names to redirect Internet users to a
website that purports to sell new and used
products manufactured by Complainant. Respondent’s use of domain names confusingly
similar to Complainant’s registered mark to divert Internet users to a website
that sells
Complainant’s products is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the domain names pursuant
to Policy ¶
4(c)(iii). See Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of
goods or services where Respondent used Complainant’s
mark without
authorization to attract Internet users to its website, which offered both
Complainant’s products and those of Complainant’s
competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611
(WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the
<pitneybowe.com> domain name where Respondent
purports to resell original
Pitney Bowes’ equipment on its website, as well as goods of other competitors
of Complainant).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has
registered and used the disputed domain names in bad faith pursuant to Policy ¶
4(b)(iii) by registering domain names
confusingly similar to Complainant’s mark
and using them to direct Internet users to a competing website that sells
Complainant’s
products. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from
Respondent, a watch dealer not
otherwise authorized to sell Complainant’s
goods, to Complainant); see also Nokia
Corp. v. Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring
<nokias.com> from Respondent, a cellular phone dealer, to Complainant).
By using the
disputed domain names to direct Internet users to a website that competes with
Complainant’s business, Respondent has
registered and used the domain names in
bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attracting, presumably
for commercial
gain, Internet users to a third-party website by creating a
likelihood of confusion with Complainant’s NORTEL mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial
gain by creating a likelihood of
confusion with Complainant’s mark and offering the same services as Complainant
via his website);
see also Scholastic
Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the
domain name at issue
to resolve to a website offering similar services as
Complainant into the same market); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14,
2001) (finding bad faith where Respondent used the domain name, for commercial
gain, to intentionally
attract users to a direct competitor of Complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <nortelusa.com > and < nortelusa.net>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
December 20, 2004
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