Nortel Networks Limited v. Dave Garner d/b/a Certified Computer Service
Claim Number: FA0710001105459
Complainant is Nortel Networks Limited (“Complainant”), represented by Laurence
R. Hefter, of Finnegan Henderson Farabow Garrett &
The domain name at issue is <nortel-phonesystem.net>, registered with 000Dom.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received by electronic transmission and
determined to be complete on
A timely Additional Submission from Complainant was received on
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nortelphones-system.net>, the domain name at issue, is confusingly similar to Complainant’s NORTEL mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. Respondent is a seller of Nortel phone systems and claims that there are many other such sellers who are using the NORTEL mark in their own domain names without affiliation with Complainant.
C. Additional Submissions:
Complainant filed an additional submission which pointed out that the Response essentially admitted the elements of Complainant’s case.
offers an array of goods and services in the telecommunications field, which
can be divided into the following categories:
telephone and accessories; access; business applications and services;
components, data and Internet; directory and operator services; intelligent networks;
Internet telephony; managed application services; optical networks,
professional services; routers; small office and residential; switching; video
and cable; and wireless and mobility.
Complainant owns the trademark and trade name NORTEL, which it first
began using as its name and to identify its goods and services in the
mid-to-late 1980s. Complainant filed its
first trademark application for the NORTEL mark in
Additionally, Complainant devotes significant resources each year to advertise and promote its corporate name and its NORTEL-branded products and services. Respondent has not been licensed to use the NORTEL mark in connection with creation of the domain name at issue and is not commonly known by the domain name.
Respondent is in the business of selling the Nortel product line using the <nortel-phonesystem.net> website for this purpose but does not claim any license or other authority granted by Complainant to use the NORTEL mark in the domain name at issue. Rather, Respondent justifies its registration and use of the domain on the grounds that many other resellers of telephone products use domain names which contain the name of the manufacturer of the products.
Response was technically defective in that a hard copy was not timely received
by the National Arbitration Forum. However, the Panel elects to consider the
Response for all purposes. See Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO
June 22, 2000) (finding that a panel may consider a response which was one day
late, and received before a panelist was appointed and any consideration made);
see also Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Complainant has rights in the NORTEL mark
through its holding of several trademark registrations for the mark with the
United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,001,714
domain name is confusingly similar to Complainant’s NORTEL mark as the disputed
domain name contains Complainant’s entire mark combined with a hyphen, the
descriptive terms “phone” and “system,” and the generic top-level domain
(“gTLD”) “.net.” The addition of a
hyphen and a gTLD are not relevant for the
purposes of Policy ¶ 4(a)(i), and the addition of common terms which have an obvious relationship to Complainant’s
business also do not distinguish the disputed domain name from Complainant’s
mark under Policy ¶ 4(a)(i). See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar.
13, 2000) (finding that the respondent’s domain name <marriott-hotel.com>
is confusingly similar to the complainant’s MARRIOTT mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights or legitimate interests pursuant to Policy ¶
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO
The WHOIS information for the <nortel-phonesystem.net> domain name lists Respondent as “Dave Garner d/b/a Certified Computer Service,” and
Respondent is not authorized to use the NORTEL mark in the registration of a
domain name. There is no evidence that
Respondent is or ever has been commonly known by the disputed domain name, and
Respondent is not commonly known by the <nortel-phonesystem.net> domain name.
See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO
The website that resolves from the
disputed domain name displays, by Respondent’s admission, various products for
sale by Respondent, including Complainant’s products, as well as those of
Complainant’s competitors and other unrelated products. Use of the <nortel-phonesystem.net> domain name in such a way is neither a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to sell, among other products, Complainant’s products as well as those in direct competition with Complainant. Such use of the <nortel-phonesystem.net> domain name constitutes a disruption of Complainant’s business, and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).
Accordingly, it is clear that
Respondent is using the <nortel-phonesystem.net> domain name
to commercially benefit through the sale of various goods advertised on the
website that resolves from the disputed domain name. The disputed domain name is capable of creating
a likelihood of confusion as to source, sponsorship, affiliation or endorsement
of the disputed domain name or corresponding website, and this is evidence of
bad faith registration and use under
Policy ¶ 4(b)(iv).
See Fossil Inc.
v. NAS, FA 92525 (Nat. Arb. Forum
Additionally, in light of Respondent’s actual knowledge of the NORTEL mark, its registration of the <nortel-phonesystem.net> domain name indicates bad faith registration and use under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nortel-phonesystem.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 2, 2008
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