Mitel Networks Corporation v. Pradeep Acenet
Claim Number: FA0802001153638
Complainant is Mitel Networks Corporation (“Complainant”), represented by Michelle
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mi-tel.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 25, 2008; the National Arbitration Forum received a hard copy of the Complaint February 28, 2008.
On February 26, 2008, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <mi-tel.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 2008, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <mi-tel.com>,is confusingly similar to Complainant’s MITEL mark.
2. Respondent has no rights to nor legitimate interests in the <mi-tel.com> domain name.
3. Respondent registered and used the <mi-tel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mitel Networks Corporation, has been providing telecommunications services since as early as 1973. Complainant has been using the mark continuously in commerce since that time. Complainant has listed numerous countries in which it owns a trademark registration including one with the United States Patent and Trademark Office (“USPTO”) for the MITEL mark (Reg. No. 1,091,325 issued May 16, 1978).
Respondent registered the <mi-tel.com> domain name November 30, 2006. Respondent’s domain name resolves to a website that advertises competing telecommunications services.
Paragraph 15(a) of 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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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; and
(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.
Complainant established rights in the MITEL mark for
purposes of Policy ¶ 4(a)(i) through registration of
the mark with the USPTO. See Lockheed Martin Corp. v.
Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the
complainant had sufficiently established rights in the SKUNK WORKS mark through
its registration with the USPTO); see also Metro. Life
Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb.
Forum Feb. 13, 2007) (finding rights in the METLIFE mark as a result of its
registration with the
Complainant contends that Respondent’s <mi-tel.com> domain name is confusingly
similar to Complainant’s mark.
Respondent’s domain name contains Complainant’s mark in its entirety and
adds a hyphen along with the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither addition is
relevant in distinguishing Respondent’s domain name from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Teleplace, Inc. v. De
Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding
that the domain names <teleplace.org>, <tele-place.com>, and
<theteleplace.com> are confusingly similar to the complainant’s TELEPLACE
trademark); see also Health Devices Corp. v.
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the <mi-tel.com> domain name. Where Complainant has established a prima facie case against Respondent, the burden of proof shifts from Complainant to Respondent to bring forth its evidence of rights and legitimate interests under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent is not commonly known by the <mi-tel.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Pradeep Acenet.” Moreover, Complainant contends that it has not licensed the MITEL mark for Respondent’s use and that no other evidence exists that Respondent is commonly known by the <mi-tel.com> domain name. As a result, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent is using the <mi-tel.com> domain name to redirect Internet users to a website that advertises competing telecommunications services. Respondent’s use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant has shown that Respondent is using the <mi-tel.com> domain name to connect Internet users to a website offering telecommunications products that seek to compete directly with Complainant’s own telecommunications products. The Panel finds that use to be a disruption of Complainant’s business and to support findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that the respondent registered and used the domain name primarily for the purpose of disrupting the business of the complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to the complainant’s services under the OPENMAIL mark).
Finally, the Panel finds that Internet users will likely be confused as to Complainant’s sponsorship of and affiliation with the resulting website. Moreover, Respondent is seeking to capitalize on this confusion by selling competing personal care products through its resulting website. This use is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mi-tel.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 15, 2008.
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