Intercall, Inc. v. Intercall Comm and Intercall Connect Telecom
Claim Number: FA1002001306521
Complainant is Intercall, Inc. (“Complainant”), represented by Ruben
C. DeLeon, of Ferguson Law Group PC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <intercallconnect.com>, registered with Namesecure.com.
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 February 4, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 8, 2010.
On February 5, 2010, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the <intercallconnect.com> domain name is registered with Namesecure.com and that Respondent is the current registrant of the name. Namesecure.com has verified that Respondent is bound by the Namesecure.com 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 February 11, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 3, 2010 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@intercallconnect.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 8, 2010, 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.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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. Respondent’s <intercallconnect.com> domain name is confusingly similar to Complainant’s INTERCALL mark.
2. Respondent does not have any rights or legitimate interests in the <intercallconnect.com> domain name.
3. Respondent registered and used the <intercallconnect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Intercall, Inc.,
holds a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for its INTERCALL mark (Reg. No. 2,549,610 issued March 19,
2002) in connection with conference calling services.
Respondent, Intercall Comm and Intercall Connect Telecom,
registered the <intercallconnect.com> domain name on April 10, 2008. The
disputed domain name resolves to a website that redirects Internet users to a
third-party website that claims to offer, among other items,
“no-connection-fee, pin less calling cards which provide users to make calls
from the USA, Canada & Australia to anywhere in the World.”
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."
In view of 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 draw such inferences it 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 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; 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 asserts rights in its INTERCALL mark through its holding of a trademark registration with the USPTO (Reg. No. 2,549,610 issued March 19, 2002). The Panel finds that Complainant has established rights in the INTERCALL mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues that Respondent’s <intercallconnect.com> domain name is confusingly
similar to Complainant’s INTERCALL mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name is
confusingly similar to Complainant’s mark as it incorporates the entirety of
Complainant’s mark and adds the generic term “connect” and the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that the addition of the generic term “connect” creates a confusing
similarity between the disputed domain name and Complainant’s mark. See
Experian Info. Solutions, Inc. v.
Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several
domain names incorporating the complainant’s entire EXPERIAN mark and merely
adding the term “credit” were confusingly similar to the complainant’s mark); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001)
(finding that the respondent’s domain names were confusingly similar to
Complainant’s GOOGLE mark where the respondent merely added common terms such
as “buy” or “gear” to the end). The Panel
also finds that the addition of a gTLD to a mark is irrelevant in
distinguishing a disputed domain name from a mark. See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27,
2007) (concluding that the affixation of a gTLD to a domain name is irrelevant
to a Policy ¶ 4(a)(i) analysis); see also
Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the Policy.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).
Complainant expressly denies any authorization or licensing on behalf of Respondent to use Complainant’s mark in any form. The WHOIS information lists the registrant as “Intercall Comm and Intercall Connect Telecom.” Although Respondent appears to be commonly known by the disputed domain name from the WHOIS information, the Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent, Intercall Comm and Intercall Connect Telecom, registered the <intercallconnect.com> domain name on April 10, 2008. The disputed domain name resolves to a website that redirects Internet users to a third-party website that claims to offer, among other items, “no-connection-fee, pin less calling cards which provide users to make calls from the USA, Canada & Australia to anywhere in the World.” The Panel finds that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain name to link Internet users to a website offering goods and services in competition with Complainant constitutes a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The Panel finds that Respondent is using the disputed domain name to intentionally attract Internet users and profit by redirecting them to Respondent’s website. The Panel finds that this use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
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 <intercallconnect.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 19, 2010
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