Claim Number: FA0201000104104
Complainant is Nortel Networks Limited, St. Laurent, Quebec, Canada (“Complainant”) represented by Lisa P. London, Esquire of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. Respondent is Raynald Grenier, Sillery, Quebec, Canada, Pro Se, (“Respondent”).
The domain name at issue is <nortelnetworks.info>, registered with Name Secure.
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.
M. KELLY TILLERY, ESQUIRE, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 24, 2002; the Forum received a hard copy of the Complaint on January 25, 2002.
On January 29, 2002, Name Secure confirmed by e-mail to the Forum that the domain name <nortelnetworks.info> is registered with Name Secure and that the Respondent is the current registrant of the name. Name Secure has verified that Respondent is bound by the Name Secure 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 January 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2002 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on February 18, 2002.
Complainant filed a timely Additional Submission on February 22, 2002.
On February 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that it is a global leader in telephony, data, wireless and wire line solutions for the internet, that it was originally known as Northern Telecom, Limited, that on April 29, 1999 it formally changed its name to Nortel Networks Corporation and on May 1, 2001 formally changed its name to Nortel Networks Limited.
Complainant contends that it first began using “Nortel” as its name to identify its goods and services in the mid to late 1980’s, that it filed its first Trademark Application for the “Nortel” mark in Canada in 1975, and that in 1991 began its formal worldwide Trademark Registration Program for the “Nortel” mark.
Complainant contends that it first began using “Nortel Networks” as its name and to identify its goods and services in 1998, filed its first Trademark Application for the “Nortel Networks” mark in Canada on July 20, 1998 and in that same year began its formal worldwide Trademark Registration Program for said mark.
Complainant contends that it has operated websites using the domain names “nortel.com” and “nortelnetworks.com” since 1994 and 1998, respectively. Complainant contends that its marks are arbitrary and inherently strong and that it has expended millions of dollars each year to advertise and promote its Nortel and Nortel Network branded products and services.
Complainant contends that its “Nortel” and “Nortel Networks” marks are fanciful terms and enjoy unquestionable fame as a result of their favorable public acceptance and worldwide recognition.
Complainant contends that its marks are coined and thus are inherently strong and thus should be accorded the highest degree of trademark protection.
Complainant contends that it owns a large number of registered trademarks throughout the world including the following:
MARK COUNTRY REGISTRATION # REGISTRATION DATE
Nortel Networks CTM (European Union) 900548 1/28/00
(& Design) CTM (European Union) 938894 1/25/00
Nortel Canada TMA211011 1/6/76
Nortel Canada TMA450484 11/24/95
Nortel Canada TMA474275 4/9/97
Nortel USA 2001714 9/17/96
Nortel USA 1980303 6/11/96
Nortel (& Design) USA 2184321 8/25/98
Complainant contends that it also has a number of Trademark Applications pending, including:
MARK COUNTRY APPLICATION # APPLICATION DATE
(& Design) Canada
Nortel Networks USA 75/544171 8/27/98
Nortel Networks USA
& Design) 75/553777 9/16/98
Complainant also contends that it owns registrations for the marks “Nortel” and “Nortel Networks” in a number of countries including Argentina, Australia, Bahamas, Bolivia, Brunei Darussalam, Chile, Colombia, Costa Rica, Czech Republic, Dominican Republic, Ecuador, Guatemala, Honduras, Hong Kong, Israel, Jamaica, Japan, Korea, Mexico, Morocco, Netherlands and Antilles, New Zealand, Norway, Paraguay, People’s Republic of China, Peru, Singapore, Switzerland, Tangier, Thailand, Trinidad and Tobago, Turkey and Vietnam.
Complainant contends that Nortel Networks’ trademarks rights in and to the marks “Nortel” and “Nortel Networks” based upon its trademark filings and its common law rights long pre-date Respondent’s registration of the domain name in question on September 15, 2001.
Complainant contends that the domain name in question is virtually identical to and certainly confusingly similar to Complainant’s internationally known “Nortel” and “Nortel Networks” marks.
Complainant contends that on December 3, 2001 it sent a letter to Respondent notifying Respondent of Complainant’s rights in and to said marks, including in the country of Italy where Respondent was then located, requesting that Respondent transfer the domain name on December 18, 2001. Respondent responded to Complainant indicating that he was one of Complainant’s shareholders and that he registered the domain name in order to use it for “an informative website and public forum about the company.”
Complainant contends that Respondent, as a shareholder, clearly had actual knowledge of Complainant’s rights in its valuable marks, and that in registering the domain with such actual knowledge, Respondent acted in bad faith and breached his Registration Agreement with NameSecure because Respondent falsely represented that its registration of the domain name did not infringe the rights of any third party.
Complainant contends that Respondent’s future use of the domain name will cause Internet users to be misled into believing that Complainant sponsors or endorses Respondent’s future website and/or products and services to be offered on said website.
Complainant contends that Respondent’s plan to use the domain name for a public forum website about Complainant does not constitute “fair use” because Respondent’s “presumed rights” to provide opinions, comments, criticism and/or to operate a public forum regarding same do not extend to the right to register and/or use domain names comprised of Complainant’s marks because the right to express one’s views is not the same as the right to use another’s name to identify one self as the source of those views.
Complainant contends that Respondent registered and plans to use the domain name primarily for the purpose of disrupting Complainant’s business by diverting traffic from Complainant’s website to Respondent’s website. Complainant contends that there is no plausible explanation for Respondent’s registration of the disputed domain name other than to trade on the goodwill of Complainant because Complainant’s marks are unique and famous and were famous at the time the disputed domain name was registered.
Complainant contends that Respondent’s website is currently inactive and that such
non-use of the domain name constitutes passive holding of the domain in bad faith.
Respondent accepts and acknowledges most of the factual allegations regarding Complainant’s registered trademarks. However, Respondent denies that “Nortel” can be considered as “the strongest mark.”
Respondent contends that the Complainant’s registrations in Italy are irrelevant in that Respondent is no longer located in Italy. He acknowledges being aware of the Trademark Registrations in Canada where he is now located.
Respondent denies having misappropriated Complainant’s goodwill.
Respondent denies that he acted in bad faith when he registered the domain name in that current legislation in Canada and the United States gives him rights to use Complainant’s trademarks for an informative, uncompetitive purpose and that Respondent did not breach his Registration Contract by representing that his chosen domain name did infringe upon any third party rights.
Respondent acknowledges that his domain name does not resolve on a specific web page at the moment but that the domain name servers are set up and that Complainant was aware of his preparation to use the domain name soon.
Respondent contends that he does not believe that consumers will be diverted from Complainant’s website by a website stating that its content is unofficial, dedicated to shareholders and hosted at .info and Respondent agrees to “put a link on his website to Complainant’s official website.”
Respondent contends that he has already confirmed to Complainant his intention and preparation of intent to use the website for a bona fide offering of information.
Respondent contends that the use of the “.info” domain name for third party information will not affect Complainant’s goodwill and that utilization of the domain name for a public forum is legal.
Respondent contends that it has neither registered nor is using the domain in bad faith and that Complainant has not been able to prove bad faith “other than by ignoring Respondent’s projected use for information to shareholder.”
Respondent contends that since both Complainant and Respondent are located in Canada, Canadian Law should be considered in rendering the decision including the Trademark-Trade Dress Act. Respondent contends that he is a complaining shareholder and that he intends to perform a public service in good faith and not confuse the public or take anything from Complainant.
(1) Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
(2) Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that Respondent has no rights or legitimate interests in respect of the domain name.
(3) Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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;
(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 presented substantial evidence that it owns numerous registered trademarks for “Nortel” and “Nortel Networks” in Canada where both Complainant and Respondent are located, in the European Union, including Italy where Respondent was previously located, in the U.S. and in at least thirty-three (33) other nations. Respondent does not contest these registrations or the factual allegations associated therewith regarding use. Complainant clearly has rights in and to these trademarks and/or service marks. One of Complainant’s registered marks, “Nortel Networks” is identical to the domain name in question. Its other mark, “Nortel” is identical to the first and the predominant portion of the domain name in question and is certainly confusingly similar thereto.
Under these circumstances, Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
RIGHTS OR LEGITIMATE INTERESTS
Complainant contends that Respondent has no rights to or legitimate interests in the domain name. Respondent has replied by merely claiming that he is a shareholder of Complainant and that he has made certain unspecified “preparations” to use the domain name as a forum for discussion and criticism of Complainant. Respondent acknowledges that the domain name does not presently resolve into an existing website. If supported by competent, credible and admissible evidence, Respondent’s claim might meet the requirements of Policy 4(c)(i) and establish that he has rights to or legitimate interest in the domain name. However, Respondent has not presented any evidence whatsoever to establish precisely what “preparations” he has made and when, and his statement alone that he has done so is an insufficient basis upon which this Panel can find that ‘before any type of notice to him of the dispute, he made use of or demonstrable preparations to use, the domain name or name corresponding to the domain name in question in connection with a bona fide offering of goods or services.’ Policy 4(c)(i).
Respondent also argues that his use is “fair use”. To some extent, Respondent appears to be arguing for the benefit of Policy 4(c)(iii) which, if applicable, might establish that he has rights to or a legitimate interest in the domain name because he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Unfortunately, as Complainant has pointed out, despite having the opportunity to do so, Respondent has not stated that his site will be “non-commercial” or “without intent for commercial gain.” In addition, since the site is not operational and Respondent has not produced adequate evidence to indicate actual preparation to begin operation of same, it is questionable as to whether he is actually “making . . .use of the domain name” for purposes of Policy 4(c)(iii). Under these circumstances, this Panel cannot conclude that Respondent has any rights to and/or legitimate interests in the domain name in compliance with any provision Policy (4)(c).
However, Respondent contends that he is a shareholder of Complainant. Complainant does not deny this. While owning a share or shares of a Complainant corporation might entitle Respondent to a number of rights and benefits, this Record includes no evidence or legal argument to the effect that one of them would or should be the right to utilize the trademark of Complainant in a domain name without specific, written authorization of Complainant which Respondent does not have.
Under all of these circusmtances, Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that Respondent has no rights or legitimate interests in the respect of the domain name.
REGISTRATION AND USE IN BAD FAITH
Complainant contends and Respondent does not deny that Respondent was aware of at least some of Complainant’s trademark registrations prior to registering the domain name in question but that he believed in good faith that such registrations would not infringe upon any rights of Complainant. Complainant does not contend, nor could it, that any of the provisions of Policy 4(b) apply here. Complainant merely contends that Respondent was aware of its registered marks and has intentionally attempted to attract internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
There is no question that use of this domain name will in fact confuse the Internet- roaming public and will divert traffic of customers and potential customers of Complainant to Respondent’s website. In fact, Respondent has made it clear that such is precisely his intent - to draw people interested in Complainant’s company to his website and this will, of course, occur whether they are really interested in his website or Complainant’s.
Respondent contends that such “initial interest confusion” can be remedied by disclaimer and/or a link which he offers to link back to Complainant’s website. However, this Panel finds such disclaimers and/or links to be inadequate. By the time an Internet surfer arrives at the “wrong” website, he or she has already been deceived and the business of Complainant has already been disrupted. Indeed, if there is a commercial purpose to Respondent’s website, Respondent has gained the benefit of this deception for commercial purposes. Respondent’s argument would be much stronger and have more merit if the domain name itself included a disclaimer or some other element which clearly told the reader that it was not the site of the owner of the “Nortel” and/or “Nortel Networks” marks. For example, an Internet surfer would be unlikely to believe that a site entitled “nortelnetworkssucks” is sponsored by or affiliated with Nortel Networks. Respondent’s domain name includes no such disclaimer or obvious “warning.”
Numerous ICANN Panels have held that such “criticism” sites do not constitute “fair use” of a mark under the Policy. See Estee Lauder, Inc. v. estelauder.com, D2000-0869 (WIPO Sept. 25, 2000) (finding the Respondent’s use of domain names comprised of the Complainant’s marks to constitute bad faith diversion of Internet traffic and disruption of the Complainant’s business); see also Dixons Group Pic v. Abdullah, D2000-1406 (WIPO Jan. 18, 2001) (finding that a respondent’s use of domain names comprised of the complainant’s mark disrupts the complainant’s business in bad faith); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000); see also Louis Vuitton Malletier v. Prade, D2000-1115 (WIPO Oct. 13, 2000); see also Hunton & Williams v. Am. Distribution Sys., D2000-0501 (WIPO Aug. 1, 2000); see also Rolex Watch USA, Inc. v. Spider Webs, Ltd., D2001-0398 (WIPO July 2, 2001) (finding the respondent’s registration of domain names comprising of the complainant’s marks for a criticism website was in bad faith); see also Monty & Pat Roberts, Inc. v. Bartell, D2000-0300 (WIPO June 13, 200) (finding a respondent’s use of a domain name for a news criticizing the complainant disrupts the complainant’s business).
Similar shareholder “gripe” sites have been found to use a complainant’s marks in bad faith. See Geniebooks.com Corp. v. Merrit, D2000-0266 (WIPO July 26, 2000); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000).
In addition, Respondent acknowledges that he is not currently “using” the domain name for an active website. His representations alone regarding “preparations” are an inadequate basis on this evidentiary record for this Panel to find that there are actual preparations which have been made and the site is expected to be operational soon. Under these circumstances, it can be said that this is merely “passive holding” of a domain name utilizing Complainant’s mark and such constitutes bad faith under the U.D.R.P. as well. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); see also Aeroturbine, Inc. v. Domain Leasing Ltd., FA 93674 (Nat. Arb. Forum Mar. 23, 2000); see also Estate of Tupac Shakur v. Andronian, AF-0349 (eRsolution Oct. 3, 2000); see also CBS Radio Inc. v. Oldies Radio, D2000-1033 (WIPO Oct. 5, 2000); see also Sanrio Co. Ltd. v. DLI, D2000-0159 (WIPO Apr. 20, 2000).
Under these circumstances, Complainant has met its burden to prove by a preponderance of the competent, credible and admissible evidence that the domain name has been registered and is being used in bad faith.
The domain name <nortelnetworks.info> shall be transferred to Complainant.
M. KELLY TILLERY, ESQUIRE Panelist
Dated: March 15, 2002
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