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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VoiceStream Wireless Corporation
Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com
Case No. D2002 - 0313
1. The Parties
The Complainant is VoiceStream Wireless Corporation, a Delaware corporation, with its principal place of business being 12920 SE 38th Street, Bellevue, Washington 98006, United States of America ("VoiceStream").
The Respondent is Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com of National City, California, United States of America ("Zeto").
2. The Domain Name and Registrar
The domain name upon which this Complaint is based is <prepaidvoicestream.com> (the "Domain Name"). The Registrar of the Domain Name as at the date of the Complaint is BulkRegister.com, Inc. whose address is 10 East Baltimore Street, Suite 1500, Baltimore, MD 21202, United States of America ("BulkRegister.com").
3. Procedural History
The Complaint was received on April 2, 2002, by email and in hardcopy on April 5, 2002, by the WIPO Arbitration and Mediation Center ("WIPO Center"). The WIPO Center has determined that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") approved by the Internet Corporation for Assigned Names and Numbers on October 24, 1999. Further, the WIPO Center has verified that the Complaint also satisfies the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") as well as the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), which such rules implement the Policy. Payment to the WIPO Center in the required amount was made by the Complainant.
On April 11, 2002, the WIPO Center notified BulkRegister.com that the Complaint had been filed. In response to a number of questions, BulkRegister.com confirmed to the WIPO Center, inter alia, the domain name was registered with BulkRegister.com, the Respondent was the registrant of the domain name at issue, the Policy applies to the dispute at issue, and that the language of the registration agreement and hence the dispute is English.
In accordance with Paragraph 2 (a) of the Rules, the WIPO Center notified the Respondent on April 18, 2002, of the filing of the Complaint and the commencement of the Administrative Proceeding. This notice advised the Respondent that Respondent had until May 8, 2002, to respond to the Complaint. No response was received on or before May 8, 2002, nor, to the knowledge of the Panel, has any response been received as of the date of the filing of this Administrative Decision. On May 13, 2002, the WIPO Center notified the Respondent of its failure to comply with the deadline for responding to the Complaint and that Respondent was in default in this case.
On May 30, 2002, the WIPO Center transmitted the case to the Administrative Panel consisting of a single member, James H. Grossman of San Francisco, California, United States of America. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence in accordance with the Rules and agreed to forward a decision in accordance with Paragraph 15 of the Rules on or before June 13, 2002.
Except for the Complaint referred to above, there have been no additional submissions by either party.
4. Factual Background
The following is asserted as fact by the Complainant and remains uncontested.
Complainant is one of the largest providers of wireless voice and data communication in the United States, operating in 37 states, serving 6.3 million subscribers, and with revenues in fiscal 2001 of more than 3.3 billion US Dollars.
Complainant, since its founding in 1996, has used the VoiceStream trademark (the Mark") both to identify its goods and services and as the name of the company. The Mark first used in commerce in February, 1996, and first registered on March 11, 1997, is the subject of eleven trademark registrations issued by the U.S. Patent and Trademark Office with an additional eleven applications pending in the U.S. relating to the Mark. Accordingly, it is the contention of Complainant that the Mark has become a "famous and highly distinctive trademark."
Complainant has provided evidence that Respondent registered the Domain Name on September 13, 2001. On or about November 12, 2001, Complainant became aware of a web site accessible via the Domain Name. According to Complainant, the web site contained no information or disclosures revealing Respondent’s ownership of the site, but rather incorporated extensive content clearly indicating that the site was owned and operated by Complainant. Further, the web site incorporated a hot link redirecting a user to another Respondent web site entitled <prepaidcellurlarnationwide.com>.
On November 14, 2001, Complainant by certified letter demanded that Respondent by November 23, 2001, terminate his unauthorized marketing and sale of Complainant owned products and services and terminate use of the Domain Name and all use of Complainant’s trademarks and service marks.
Thereafter, a series of written and oral communications took place between the parties and/or their representatives resulting in Respondent’s making some concessions; however, by March 2002 Respondent not only refused to discuss any settlement relating to continued use of the Domain Name, but also the Domain Name site advised that the Domain Name was "available" and featured a "For Sale" sign and other information demonstrating Respondent’s intent to sell the Domain Name.
5. Parties Contentions
Complainant argues that the Domain Name should be transferred to Complainant because all of the three elements required by Paragraph 4 (a) of the Policy are present, namely, (i) Respondent’s Domain Name is "identical or confusingly similar to a trademark…in which Complainant has rights;" (ii) Respondent has "no rights or legitimate interests in respect of the Domain Name;" and (iii) Respondent’s Domain Name has "been registered and is being used in bad faith."
Complainant states that the Domain Name includes the Mark verbatim and that Respondent has sought to profit from Complainant’s substantial investment in its trademark and reputation. Further, since the Mark has a certain goodwill, Respondent has effectively sought to reduce that goodwill by registering the Domain Name in order to confuse consumers. Respondent’s attempt to sell the Domain Name when challenged by Complainant is further evidence of bad faith.
Respondent failed to file any response to Complainant’s allegations.
6. Discussion and Findings
With regard to the issue of whether the Domain Name is identical or confusingly similar to Complainant’s trademarks, the Panel takes notice of the fact that the Domain Name incorporates in its entirety a distinctive trademark and as such creates sufficient similarity between the trademark and the domain name to render it confusingly similar. The Panel is of the view that Respondent was clearly relying on consumer confusion to increase the number of "hits" on its site and, thereafter, through the hotlink, converting those consumers to the sale of an alternative product. The Panel finds that the Complainant has proven Paragraph 4 a.(i) of the Policy.
Paragraph 4 c. of the Policy explains how a Respondent can demonstrate its rights to and legitimate interests in the Domain Name. While Respondent in this case has failed to make any response, Complainant has set forth persuasive arguments to the effect that Respondent certainly had constructive notice - if not actual notice - of Complainant's Mark and that Respondent was more likely using a form of bait and switch advertising to obtain the eyes of the consumer and then switch that consumer through the hotlink to another site and another product. The Panel finds that the Complainant has proven Paragraph 4 a. (ii) of the Policy.
The Panel agrees with Complainant's contention that the Respondent has registered and is using the Domain Name in bad faith based on Paragraph 4 b.(iv) in that Respondent has done everything possible to create confusion with regard to the Mark as to its source, sponsorship, affiliation or endorsement of Respondent’s web site or location. Customers would reasonably believe that Respondent was in some business arrangement with Complainant and the web site using the Domain Name had the blessings of Complainant. The use of the hotlink to move consumers elsewhere as well as the attempt to sell the Domain Name when Respondent had run out of excuses for failing to cease usage of the Domain Name can only be explained as a party acting in bad faith.
The Panel has found that all of the requirements of Paragraph 4 of the Policy have been proven by the Complainant. The Panel has also taken notice that Respondent failed to respond to the Complaint and is thus in default. Accordingly, in accordance with the remedy provided in Paragraph 4 i. of the Policy, the Panel requires that the domain name <prepaidvoicestream.com> be transferred from Respondent to the Complainant.
James H. Grossman
Dated: June 13, 2002