MetroPCS Wireless, Inc. v.
Dary Modern
Claim Number: FA0906001266795
PARTIES
Complainant is MetroPCS Wireless, Inc. (“Complainant”), represented by James
F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metro-pcs-phones.com>, registered
with Domain
Discover.
PANEL
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.
Prof. Darryl C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 5, 2009; the
National Arbitration Forum received a hard copy of the Complaint on June 8, 2009.
On June 8, 2009, Domain Discover confirmed by e-mail to the
National Arbitration Forum that the <metro-pcs-phones.com> domain name is
registered with Domain Discover and that
the Respondent is the current registrant of the name. Domain
Discover has verified that Respondent is bound by the Domain Discover 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 June 12, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 2, 2009 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@metro-pcs-phones.com by e-mail.
A timely Response was received and determined to be complete on July 1, 2009.
An Additional Submission was received from Complainant on July 6, 2009 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On July 8, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Prof. Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, a company engaged in the wireless telephone business,
contends that it is the owner of various registrations for the mark METROPCS
and that Respondent has registered the confusingly similar <metro-pcs-phones.com> domain name, wrongfully incorporating its protected mark into the domain name
without authorization. Complainant
further contends that Respondent has no rights or legitimate interests in the
disputed domain name and that Respondent registered and is using the disputed
domain name in bad faith.
B. Respondent
Respondent contends that it is legitimately using the disputed domain
name “to practice free speech about the Claimant’s products and services.”
Respondent further contends that it has not registered a trademark holder’s
name in an attempt to extort money since no attempt to sell the disputed domain
was ever made. Respondent also states that none of the ICANN elements defining
bad faith apply to Respondent’s conduct and asserts that, “Claimant and
respondent not competitors and Respondent offers web visitors information
supporting the Claimants products and services.” Respondent states that it is
free to make reference to Metro PCS in commentary about that company and its
products and it did not use the Metro PCS logo.
C. Additional Submissions
Complainant’s Additional Submission asserts that Respondent’s
activities are neither protected free speech nor protected as non-commercial
protest and commentary. Complainant further states that even protected free
speech may be prohibited if it is causing confusion amongst consumers.
Complainant also refutes Respondent’s claim that the parties are not in
competition and that his actions are not indicative of bad faith.
FINDINGS
Complainant is MetroPCS, a company offering
wireless telephones and wireless communication services in various metropolitan
areas throughout the
Respondent, listed as Dary Modern of Bellevue,
WA, USA, registered the disputed domain name <metro-pcs-phones.com> on September 26, 2007. Because
Respondent did not use the MetroPCS logo Respondent felt that no reasonable
consumer comparing the official MetroPCS website with Respondent’s site would assume
the sites come from the same source or would otherwise be affiliated with,
connected with or sponsored by MetroPCS. Respondent established its business in
DISCUSSION
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 established that it has
rights in the METROPCS mark pursuant to Policy ¶ 4(a)(i) through its several
registrations of the mark with the United States Patent and Trademark Office
(“USPTO”) (i.e., Reg. No. 2,784,778 issued November 18, 2003).
The disputed domain name is identical or confusingly similar to
Complainant’s registered mark. The <metro-pcs-phones.com> domain
name contains Complainant’s entire mark, adds one hyphen within the mark and
one hyphen after the mark, adds the descriptive term “phones,” which describes
Complainant’s business, and adds the generic top-level domain “.com.” See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)
(“[T]he fact that a domain name wholly incorporates a Complainant’s registered
mark is sufficient to establish identity [sic] or confusing similarity for
purposes of the Policy despite the addition of other words to such marks”); see also
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 Jerry Damson, Inc. v.
Complainant has proven this
element.
The Complainant
must first make a prima facie case that Respondent lacks rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the
burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name). Complainant has made such a case based on its presentation of unrefuted
evidence in several areas.
Complainant has presented evidence of Respondent’s domain name
resolution to a website that offers Complainant’s products and displays
advertisements for Complainant’s competitors. As such, Respondent’s use of the disputed domain name is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See G.D.
Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002)
(finding the respondent’s use of the disputed domain name to solicit
pharmaceutical orders without a license or authorization from the complainant
does not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i)); see also Glaxo Group Ltd. v.
WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the
respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site).
Despite later efforts at legitimization, Respondent was not made an affiliate or otherwise authorized by Complainant to sell Complainant’s products as Respondent claimed on the website. Thus, Respondent passed itself off as Complainant, which is also not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Furthermore, the WHOIS information lists “Dary Modern” as the registrant and, without any proof to the contrary provided by Respondent, this information indicates that Respondent is not commonly known by the <metro-pcs-phones.com> domain name. Since Respondent is not commonly known by the disputed domain name this is further proof that Respondent lacks any rights or legitimate interests in the disputed domain under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
There was no evidence presented by
the Respondent to support his claim that he was exercising his right to free
speech by using the disputed domain for any form of protest, commentary,
criticism or noncommercial fair use such as a limited descriptive reference for
comparative advertising purposes. Respondent claimed to be “a leading
authorized nationwide dealer for Metro PCS cell phones” offering sales and
service of MetroPCS products as well as those of competitors. Those false
representations were further proof that Respondent has no rights and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii). See Eastman Chem. Co. v. Patel, FA
524752 (Nat. Arb. Forum Sept. 7, 2005) (finding that the respondent was using a domain name that falsely
conveyed an association with complainant and lead Internet users to his complaint
website. This was evident by the fact
that complainant’s EASTMAN trademark figured prominently at the top of the website.
The Panel found respondent was “illegitimately identifying himself as the
complainant and attracting visitors to his site by trading off the
complainant’s goodwill in its EASTMAN CHEMICALS trademark.”); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9,
2000) (“[T]he Panel does not dispute Respondent’s right to establish and
maintain a website critical of Complainant . . . However, the panel does
not consider that this gives Respondent the right to identify itself as
Complainant.”); see also Diners Club Int’l,
Ltd. v. Infotechnics Ltd., FA
169085 (Nat. Arb. Forum Aug.
20, 2003) (“Respondent may have the right to post criticism of Complainant
on the Internet, however, Respondent does not have the right to completely
appropriate Complainant’s registered trademark in a domain name in a way that
will mislead Internet users as to the source or affiliation of the attached
website.”).
Complainant
has proven this element.
Despite Respondent’s assertion to the
contrary, several aspects of Respondent’s behavior bring Respondent within the
ambit of registration and use in bad faith. Respondent’s use of the <metro-pcs-phones.com> domain name to sell
Complainant’s products as well as to display advertisements for Complainant’s
competitors is evidence of bad faith registration and use under Policy ¶
4(b)(iii). See 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).”); see
also
Respondent is also
guilty of holding itself out as a proper source of Complainant’s products by
claiming on the website resolving from the <metro-pcs-phones.com>
domain name
that Respondent is an authorized dealer. Respondent’s passing itself off as the
source of Complainant’s goods, constitutes bad faith registration and use under
Policy ¶ 4(b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222
(WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com
Official Home Page” gave consumers the impression that the complainant endorsed
and sponsored the respondent’s website); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487
(WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and
services without Complainant's authority . . . is bad faith use of a
confusingly similar domain name.”).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the
ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <metro-pcs-phones.com> domain name be
TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson, Panelist
Dated: July 22, 2009
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