Alltel Corporation v. Fredrik Berchtold c/o Martinsson
Case No. D2005-1173
1. The Parties
Complainant is Alltel Corporation, with its principal place of business in Little Rock, Arkansas, United States of America.
Respondent is Fredrik Berchtold c/o Martinsson, with
its principal place of business located in Stockholm, Sweden.
2. The Domain Name and Registrar
The domain name under dispute is <alltelcorporation.com> (the “Domain Name”).
The registrar of the domain name under dispute is
Go Daddy Software, Inc. (the ”Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2005. On November 14, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 14, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on November 22, 2005. The Center verified that the Complaint, together with the Amended Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
It is worth mentioning that the undersigned Panel has independently determined and agrees with WIPO’s assessment that the Complaint is in formal compliance with the requirements of the Policy, the Rules, and WIPO’s Supplemental Rules.
On November 18, 2005, WIPO sent via e-mail to the Complainant, with copy to the Respondent, a request of information of a complaint that was initially filed and dismissed without prejudice before another forum. On November 22, 2005, WIPO received from the Complainant a revised draft of the Complaint.
On November 24, 2005, WIPO properly sent via e-mail, and by courier to the Respondent a “Notification of Complaint and Commencement of Administrative Proceedings” enclosing a copy of Complainant’s Complaint and the Amended Complaint and indicating December 14, 2005, as deadline to submit the corresponding Response. Furthermore, a hardcopy of such Complaint, as confirmed by Complainant, was also previously sent by Complainant to Respondent via courier, as provided by paragraphs 3(b)(xii) of the Rules and 4(a) of the WIPO Supplemental Rules.
On December 19, 2005, WIPO sent via e-mail to the Respondent, with copy to Complainant, a “Notification of Respondent Default” confirming that Respondent has failed to comply with the deadline to submit its response, and therefore that a single panelist shall be appointed as proposed by the Complainant in its Complaint.
On January 17, 2006, WIPO sent to the Registrar via e-mail a request to confirm that the domain name <alltelcorporation.com> will be placed in registrar hold and registrar lock status and that the domain name will remain in such status after the lapse of the expiry date until the administrative proceeding under the Policy are concluded; and whether any action is required by the parties to keep the domain name on hold and under registrar lock so that the administrative procedure can continue as provided by the Policy. According to the above, on January 19, 2006, WIPO received via e-mail from the Registrar the confirmation that the domain name <alltelcorporation.com> has been placed on lock and that if any party needs further assurance that the name is not dropped at expiration, they will need to contact the Registrar to renew the domain name. The above was confirmed by WIPO to the Parties by e-mail dated January 19, 2006.
On January 17, 2006, the undersigned received an invitation to serve as Panelist in this administrative proceeding, and on January 20, 2006, the undersigned signed and sent to WIPO a Statement of Acceptance to participate as Single Member Panelist and a Declaration of Impartiality and Independence.
On January 24, 2006, WIPO sent to Complainant and Respondent a “Notification of Appointment of Administrative Panel and Projected Decision Date”, appointing Pedro W. Buchanan Smith as Sole Panelist.
This Panel further considers that the Complaint was properly notified to the registered domain-name holder, as provided for in paragraph 2(a) of the Rules.
The Panel has not received any further requests from Complainant or Respondent regarding submissions or waivers, extensions of deadlines and the Panel has not found it necessary to request any further information, statements or documents from the Parties, nor the need as an exceptional matter, to hold any in-person hearings as necessary for deciding the Complaint, as provided for in paragraphs 12 and 13 of the Rules. Therefore, the Panel has decided to proceed under the customary expedited nature contemplated for this type of domain name dispute proceedings.
The language of the proceeding is English, pursuant
to paragraph 11(a) of the Rules.
4. Factual Background
According to the information provided by the Complainant, and due to the fact that the same was not disputed by the Respondent, the following facts and circumstances are recognized within this proceeding:
Alltel Corporation owns a registered trademark for the ALLTEL mark. Alltel has been conducting business using the ALLTEL mark since 1983. Alltel uses its mark to promote communication services in the United States and to promote information services in over 50 countries worldwide. Alltel is a Delaware corporation which is publicly traded (its stock is listed on the New York Stock Exchange) and is a Fortune 250 company.
Alltel is also the registered owner of the domain name <alltel.com> and has conducted business over the website to which this domain name resolves since 1995. Alltel also is the registered owner of a variety of domain names which include the registered trademark ALLTEL
Complainant has indicated that the use of its mark has been, and continues to be a crucial part of its market presence and is a key to such company’s present and future success.
In support of its Complaint, Complainant submitted copies of the following:
(a) Registration Certificate of the trademark ALLTEL, registered with the United States Patent and Trademark Office under registration number 1,322,561 on February 26, 1985, to protect services comprised within international class 38, with application filing date of November 15, 1983, indicating August 31, 1983 as first use date, registered in favor of Alltel Corporation;
(b) Search performed on the Trademark Electronic Search System from the United States Patent and Trademark Office, evidencing the registration of the trademark ALLTEL to protect services comprised within international class 38, under the serial number 78587351, with application filing date of March 15, 2005, registered in favor of Alltel Communications, Inc.; and
(c) Search performed on Network Solutions’ Whois Database evidencing
the registration of the domain name <alltel.com> in favor of Alltel Communications,
Inc., created on March 7, 1995.
5. Parties’ Contentions
The Complainant alleges that the Respondent’s use of the word “corporation” added at the end of the ALLTEL mark is confusingly similar. That although the word “corporation” is generic, it has an obvious relationship to the Complainant and that the combination is identical to the Complainant’s corporate name.
That Internet users would obviously take the Domain Name to indicate the Complainant and would expect to find the Complainant’s website at that address.
That Respondent uses the <alltelcorporation.com> domain name to intentionally misdirect visitors who attempt to visit Complainant’s website to Respondent’s website. The Respondent’s domain name directs consumers to a search engine website which contains a series of hyperlinks to various topics such as “chat and dating, travel, and wholesale and auction”. These links direct customers to a variety of products and services. Complainant has not authorized the use of this domain name in connection with the products and services offered.
That the Respondent’s website could not be determined to be in use with a bona fide offering of goods or services.
That Respondent’s use does not represent any legitimate noncommercial or fair use and, instead, serves only to misdirect Complainant’s customers and potential customers to Respondent’s site to tarnish the trademark at issue. These facts clearly show that Respondent has no rights or legitimate interests in the domain name pursuant to the Policy.
That Respondent has no connection to the Complainant’s mark or any similar mark. That the Respondent is not commonly known by the domain name <alltelcorporation.com>.
That Respondent does not have a legitimate interest in the Domain Name <alltelcorporation.com> pursuant to the Policy.
That Respondent is not using the disputed Domain Name in connection with a bona fide offering of goods or services under the Policy because the Domain Name redirects unsuspecting Internet users to a commercial website that offers links to various products and services. That Respondent is making an opportunistic use of Complainant’s mark in order to capitalize on the goodwill and fame associated with the Complainant’s name.
That Complainant’s mark obviously has great value to Complainant, and Complainant has substantial goodwill built up in, and associated with, its mark. That Complainant has protected its mark, by registering it on the Principal Register of the United States Patent and Trademark Office. That it is reasonable to infer that Respondent knew or should have known of Complainant’s rights and interests in the ALLTEL mark when Respondent registered the domain name.
That, therefore, Respondent’s registration of the domain name <alltelcorporation.com> despite knowledge of Complainant’s rights constitutes bad faith registration under the Policy.
That Respondent is attempting to capitalize and trade on Complainant’s goodwill and brand recognition through use of the <alltelcorporation.com> domain name. That it appears that both the registration and use of the domain name are in bad faith and intended to deliberately mislead Complainant’s customers.
Lastly, Complainant has requested under paragraph 4(i) of the Policy, that the Administrative Panel appointed in this proceeding issue a decision ordering that the contested domain name be transferred to the Complainant.
Respondent failed to reply to Complainant’s contentions.
6. Discussion and Findings
The Panel considers that the Respondent, by registering the disputed domain name with the Registrar (an Internet Corporation for Assigned Names and Numbers’ –ICANN– accredited domain name registrar), agreed to be bound by all terms and conditions of the Registrar’s Service Agreement, and any pertinent rule or policy, and particularly agreed to be bound by the Policy (incorporated and made a part of the Service Agreement by reference), which requests that proceedings be conducted according to the Rules and the selected administrative-dispute-resolution service provider’s supplemental rules, in the present case being the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Therefore, the dispute subject matter of this proceeding is within the scope of the above mentioned agreements and Policy, and this Panel has jurisdiction to decide this dispute.
Furthermore, the Panel considers that in the same manner, by entering into the above mentioned Service Agreement, the Respondent agreed and warranted that neither the registration of its domain name nor the manner in which it may intend to use such domain name will directly or indirectly infringe the legal rights of a third party, and that in order to resolve a dispute under the Policy, Respondent’s domain name registration services may be suspended, cancelled or transferred.
The Panel also particularly considers that it is essential to dispute resolution proceedings that fundamental due process requirements be met.
Such requirements include that the Parties and particularly the Respondent in this case be given adequate notice of proceedings initiated against them; that the Parties may have a fair and reasonable opportunity to respond, exercise their rights and to present their respective cases; that the composition of this Panel be properly made and the Parties be notified of the appointment of this Panel; and that both Parties be treated with equality in these administrative proceedings.
In the case subject matter of this proceeding, the Panel is satisfied that these proceedings have been carried out by complying with such elemental due diligence requirements, and particularly contemplating the notification of the filing of the Complaint and the initiation of these proceedings giving the Respondent a right to respond.
Paragraph 4(a) of the Policy directs that the Complainant must prove the presence of each of the following elements: (i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This Panel finds that Respondent’s domain name <alltelcorporation.com> is confusingly similar to Complainant’s very well known ALLTEL trademark. Complainant’s trademark was registered significantly earlier than the date of registration of Respondent’s domain name <alltelcorporation.com>.
In addition, the domain name <alltelcorporation.com> wholly comprises Complainant’s ALLTEL trademark, with the addition of the word “corporation”. That although the word “corporation” is generic, its composition with Complainant’s trademark makes the domain name <alltelcorporation.com> identical to the Complainant’s corporate name.
Furthermore, the addition of the other gTLD “.com” is not a distinctive element, it is just a necessary element required for the registration of a first level domain name.
B. Rights or Legitimate Interests
This Panel finds, in general, from the information and facts that were analyzed and from the lack of evidence to the contrary, that there is no indication that the Respondent has any rights or legitimate interests in connection with Complainant’s ALLTEL trademark nor with the domain name under dispute; That the domain name under dispute is being used to intentionally misdirect to the Respondent’s website visitors who attempt to visit Complainant’s website; that the Respondent has not used nor prepared to use the <alltelcorporation.com> domain name in connection with any good faith offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy; nor that the Respondent is commonly known by the domain name as contemplated under paragraph 4(c)(ii) of the Policy; nor that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue as contemplated under paragraph 4(c)(iii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds, from the information and facts that
were analyzed, and from the lack of evidence to the contrary, that the registration
of the domain name <alltelcorporation.com> by the Respondent is in bad
faith, in particular but without limitation, pursuant to paragraph 4(b)(iv)
of the Policy, in view of the fact that the Respondent has intentionally attempted
to attract, for commercial gain, Internet users to the website “www.alltelcorporation.com”,
by creating a likelihood of confusion with the Complainant’s trademark
ALLTEL, as to the source, sponsorship, affiliation, or endorsement of the website
“www.alltelcorporation.com”; and therefore has made a bad faith
use of the domain name.
Therefore, and in consideration of the Complaint’s compliance with the formal requirements for this domain name dispute proceeding, to the factual evidence and legal contentions that were submitted, to the conclusive confirmation of the presence of each of the elements contemplated in Paragraph 4(a)(i), (ii) and (iii) of the Policy, and on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and other applicable rules and principles of law, as directed by paragraphs 14(a) and (b) and 15(a) of the Rules, this Panel decides:
(1) that the domain name <alltelcorporation.com> registered by Respondent is confusingly similar to Complainant’s trademark ALLTEL;
(2) that Respondent has no rights or legitimate interests in the <alltelcorporation.com> domain name; and
(3) that the <alltelcorporation.com> domain name has been registered and is being used in bad faith by the Respondent.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <alltelcorporation.com> be transferred to the Complainant.
Pedro W. Buchanan
Dated: February 7, 2006