DECISION

Nortel Networks Limited v. Thomas Cross d/b/a TECHtionary

Claim Number:  FA0405000271182

PARTIES

Complainant is Nortel Networks Limited (“Complainant”), represented by Lisa London, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005. Respondent is Thomas Cross d/b/a TECHtionary  (“Respondent”), Suite E3 Box 313, 2525 Arapahoe, Boulder, CO 80302.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nortelemation.com>, registered with Network Solutions, Inc.

PANEL

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

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 12, 2004; the Forum received a hard copy of the Complaint on May 13, 2004.

On May 17, 2004, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <nortelemation.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 May 17, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 7, 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@nortelemation.com by e-mail.

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 15, 2004 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <nortelemation.com> domain name is confusingly similar to Complainant’s NORTEL mark.

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

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

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

FINDINGS

Complainant, Nortel Networks Limited, 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 in the United States (e.g. U.S. Reg. No. 2,001,714, registered on September 17, 1996). Complainant has also registered its NORTEL mark as a design mark in the United States (U.S. Reg. No. 2,184,321, registered on August 25, 1998), which consists of the word NORTEL with a stylized, astrolabe design representing the letter “o” in Complainant’s mark. Complainant also utilizes the NORTEL mark online at the <nortelnetworks.com> domain name, which provides information about its various goods and services

Respondent, Thomas Cross d/b/a TECHtionary, registered the <nortelemation.com> domain name on October 7, 2003, without license or permission to use Complainant’s NORTEL marks for any purpose. Respondent initially used the disputed domain name to host a website selling technology training services via subscription. This website displayed the name “Nortelemation” and wholly incorporated Complainant’s NORTEL design mark (U.S. Reg. No. 2,001,714) within the name.

After receipt of a cease-and-desist letter from Complainant, Respondent removed the above-mentioned “Nortelemation” moniker and replaced it with its own name, Techtionary, while leaving the remainder of its web content intact. Complainant sent several additional cease-and-desist letters to Respondent, all of which were unanswered.

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 rights in the NORTEL mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office. 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.”).

Respondent’s <nortelemation.com> domain name is confusingly similar to Complainant’s NORTEL mark. The dominant feature of the domain name is Complainant’s NORTEL mark, and Respondent’s addition of the “emation” suffix does not dispel the confusing similarity that arises from its use of the NORTEL mark. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding the domain name <scrabblemania.com> confusingly similar to Complainant’s SCRABBLE mark because the addition of the descriptive word “mania” to the mark did not significantly distinguish it from the mark while noting that “the addition of the word ‘mania’ to SCRABBLE does little to break the obvious connection between the domain name and the complainant company”); see also Mattel, Inc. v. Guttenberg.com, FA 245919 (Nat. Arb. Forum April 29, 2004) (finding the domain name <barbiezone.com> confusingly similar to Complainant’s BARBIE mark).

Accordingly, the Panel finds that the <nortelemation.com> domain name is confusingly similar to Complainant’s NORTEL mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is using the disputed domain name to host a commercial website. However, Respondent’s commercial use of the domain name cannot be considered to be bona fide, as it is using Complainant’s NORTEL mark without Complainant’s permission in order to attract Internet users. Its use of Complainant’s mark in the domain name, and its previous use of the NORTEL design mark on its website, eliminate the possibility that Respondent could rely on the provisions of Policy ¶¶ 4(c)(i) and (iii) to evidence its rights or legitimate interests in the disputed domain name. See Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding no rights or legitimate interests where Respondent registered domain names which infringed upon Complainant’s mark and had no resemblance to Respondent’s business name).

There is no evidence before the Panel to support the conclusion that Respondent has ever been commonly known by the name “Nortelemation,” which supports the conclusion that Policy ¶ 4(c)(ii) does not apply in this dispute. This conclusion is bolstered by Respondent’s inclusion of Complainant’s design mark on its website, which is evidence that Respondent was merely copying Complainant’s mark at its domain name and was not actually known by the name. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); 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 name “Nokia”).  

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <nortelemation.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Given the arbitrary nature of the NORTEL mark and Respondent’s immediate replication of Complainant’s design mark on its website, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the NORTEL mark when it registered the disputed domain name. Therefore, Respondent’s registration was done in bad faith. See Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name); see also Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding Respondent “was aware of and had knowledge of” Complainant’s mark when registering the domain name because Complainant’s mark was a coined arbitrary term with no meaning apart from Complainant’s products).

Just as Respondent’s actual knowledge of Complainant’s rights in the NORTEL mark is evidence of its bad faith registration of the disputed domain name, this knowledge can also be used as evidence that the domain name was used in bad faith. By appropriating Complainant’s design mark on its website, Respondent created the false impression of having some association with Complainant. Respondent’s removal of the infringing material after receiving a cease-and-desist letter from Complainant is immaterial, especially in light of the fact that the NORTEL mark remains the dominant feature of Respondent’s domain name and is therefore still capable of confusing Internet users into believing that Respondent is somehow affiliated with Complainant. See Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (“Just as the employment of a well-known business name for no particularly good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner…  Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract [Complainant’s] customers”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain name).

The Panel thus finds that Respondent registered and used the <nortelemation.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

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 <nortelemation.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  June 28, 2004

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