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
postmaster@nortelnetworks.info 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.
A.
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
Nortel Networks
(& 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
Nortel Networks
(& Design) Canada
0890556 9/16/98
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.
B. Respondent
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
Philadelphia, PA
Dated: March 15, 2002
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