National Arbitration Forum




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 & Dunner L.L.P., 901 New York Avenue Nw, Washington, DC 20001.  Respondent is Dave Garner d/b/a Certified Computer Service (“Respondent”), 32204 N. Castaic Rd. P208, Castaic, CA 91384.




The domain name at issue is <>, 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 electronically on October 31, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 1, 2007.


On November 14, 2007, 000Dom confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with 000Dom and that the Respondent is the current registrant of the name.  000Dom has verified that Respondent is bound by the 000Dom 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 November 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 10, 2007 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 by e-mail.


A timely Response was received by electronic transmission and determined to be complete on December 10, 2007.


A timely Additional Submission from Complainant was received on December 17, 2007. 


On December 19, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A.  Complainant makes the following assertions:


1.      Respondent’s <>, 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.




            Complainant 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 Canada in 1975, and in 1991, began its formal worldwide trademark registration program for the NORTEL mark.  Nortel owns numerous registrations for its NORTEL mark, including U.S. Registration No. 2,001,714 for the mark NORTEL in block letters, first used June 26, 1995, filed December 27, 1991, issued September 17, 1996, covering goods and services in International Classes 9 (telephone and telecommunications equipment and electrical equipment) and 37 (telecommunications services).

            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 <> 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.



            The 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 July 2, 2002) (“In the interest of having claims decided on the merits and not by default and because Complainant has not been prejudiced in the presentation of its case by the late submission, Respondent’s opposition documents are accepted as timely.”).



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.


Identical and/or Confusingly Similar

            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 issued September 17, 1996).  These registrations adequately establish Complainant’s rights in the NORTEL mark for the purposes of Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of          validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).


            The <> 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 <> is confusingly similar to the complainant’s MARRIOTT mark); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).    


            The Panel finds that Policy ¶ 4(a)(i) has been satisfied.


Rights or Legitimate Interests

            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 ¶ 4(a)(ii).  See 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., D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).


            The WHOIS information for the <> 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 <> domain name.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was         not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).


            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 <> 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 Jan. 7, 2002)     (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).   


            The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.


Registration and Use in Bad Faith

            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 <> 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, 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 <> 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 Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).


            Additionally, in light of Respondent’s actual knowledge of the NORTEL mark, its registration of the <> 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 <> domain name be TRANSFERRED from Respondent to Complainant.




James A. Carmody, Esq., Panelist
Dated: January 2, 2008





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