Cricket Communications, Inc. v. Kanter Associates SA c/o Admin
Claim Number: FA1005001324411
Complainant is Cricket Communications, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mycircket.com> and <wwmycricket.com>, registered with FABULOUS.COM PTY LTD.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2010.
On May 13, 2010, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <mycircket.com> and <wwmycricket.com> domain names are registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the names. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 May 18, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mycircket.com and postmaster@wwmycricket.com by e-mail. Also on May 18, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is a wireless telephone service provider that was established in 1999.
Complainant provides unlimited, flat-rate wireless services
to customers in twenty-five states of the
Complainant owns several registrations with the United States Patent and Trademark Office ("USPTO") for its CRICKET mark (including service mark No. 2,359,369, issued June 20, 2000).
Respondent registered the <mycircket.com> domain name on December 14, 2003, and the <wwmycricket.com> domain name on March 11, 2004.
Each of the <mycircket.com> and <wwmycricket.com> domain names resolves to a website featuring hyperlinks to third-party websites, some of which compete with the business of Complainant.
Respondent receives click-through fees from these linked websites.
Respondent’s <mycircket.com> and <wwmycricket.com> domain names are confusingly similar to Complainant’s CRICKET mark.
Respondent is not commonly known by either of the <mycircket.com> and <wwmycricket.com> domain names, and Complainant has not given Respondent permission to use Complainant’s mark in a domain name.
Respondent does not have any rights to or legitimate interests in the <mycircket.com> and <wwmycricket.com> domain names.
Respondent registered and uses the <mycircket.com> and <wwmycricket.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its CRICKET service mark under Policy ¶ 4(a)(i) through its mark registrations with the USPTO. It is not necessary for Complainant to own mark rights in the country where Respondent resides or has operations for purposes of a Policy ¶ 4(a)(i) analysis. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where a complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of the respondent’s place of business).
The <mycircket.com> and <wwmycricket.com> domain names are confusingly similar to Complainant’s CRICKET mark. The <mycircket.com> domain name contains a misspelled version of Complainant’s mark by transposition of the letters “r” and “i,” the addition of the generic prefix “my” and the generic top-level domain (“gTLD”) “.com”. These differences are not sufficient to distinguish the domain name from Complainant’s mark so as to avoid a finding of confusing similarity. The <wwmycricket.com> domain name also contains Complainant’s entire mark, merely deleting the third letter “w” from “www” and the period that separates the “www” from the second-level portion of the domain name, and adding the prefix “my” and the gTLD “.com.” These differences are likewise insufficient to distinguish the domain name from the mark under a confusing similarity analysis. Thus both domain names are confusingly similar to Complainant’s CRICKET mark under Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark); further see Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that a respondent’s domain name <wwwbankofamerica.com> is confusingly similar to a complainant’s trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); finally, see 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 a domain name for purposes of determining whether it is identical or confusingly similar to a competing mark).
Therefore, the Panel finds that the <mycircket.com> and <wwmycricket.com> domain names are confusingly similar to Complainant’s CRICKET mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <mycircket.com> and <wwmycricket.com> domain names. Complainant is required to make out a prima facie case in support of these allegations. Once Complainant has produced such a prima facie case, the burden shifts to Respondent to show that it does have rights to or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant
must first make a prima facie case
that respondent lacks rights and legitimate interests in the disputed domain
names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show
it does have rights or legitimate interests.
See also 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.”
Complainant has produced a prima facie case in support of its allegations under this head of
the Policy. Owing to Respondent’s
failure to respond to these proceedings, we
are entitled to presume that Respondent does not have any rights to or
legitimate interests in the <mycircket.com> and <wwmycricket.com>
domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed
domain name.
See also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond).
Nonetheless, we elect to examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complaint alleges, and Respondent does not deny, that Respondent is not commonly known by the <mycircket.com> and <wwmycricket.com> domain names, and that Complainant has not given Respondent permission to use Complainant’s mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the <mycircket.com> and <wwmycricket.com> domain names only as “Kanter Associates SA”, which does not resemble either of the domains. On this record we conclude that Respondent is not commonly known by either of the disputed domain names so as to demonstrated rights to or legitimate interests in either of them under the provisions of Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that a respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the domains and there was no other evidence in the record to suggest that that respondent was commonly known by the domain names there in dispute); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark).
We also note that Complainant alleges, without objection
from Respondent, that Respondent is using the disputed domain names to display
various third-party links to other businesses and websites, some of which are
in competition with the business of Complainant. Complainant further alleges, again without
objection from Respondent, that Respondent receives click-through fees from
these linked websites. Such use of the
contested domains is evidence of Respondent’s lack of rights to and legitimate
interests in the domains in that Respondent is not using the disputed domains in
connection with 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 Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006)
(finding that a respondent’s use of domain names confusingly similar to a
complainant’s WAL-MART mark to divert Internet users seeking that complainant’s
goods and services to websites competing with the business of that complainant
did not constitute a bona fide offering of goods or services under
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that a respondent was
not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use by redirecting Internet users to a commercial search
engine website with links to multiple websites that may be of interest to a
complainant’s customers, and presumably receiving “click-through fees” in the
process).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed domain names to display
links to the websites of Complainant’s competitors in the telecommunications
and wireless telephone service market disrupts Complainant’s business. Such disruption is evidence of Respondent’s
bad faith registration and use of the contested domains under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain
name to attract Internet users to a website containing links to the websites of
a complainant’s commercial competitors shows bad faith registration and use
under Policy ¶ 4(b)(iii)); see also David
Hall Rare Coins v.
In the circumstances here presented, we further conclude that
Respondent registered and uses the disputed domain names to attract Internet
users to Respondent’s website, from which Respondent collects click-through
fees from the businesses advertised there.
Respondent’s use of the disputed domain names as alleged is further evidence
of bad faith registration and use of the contested domains under Policy ¶
4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June
11, 2006) (holding that a respondent’s use of the
<bankofamericanfork.com> domain name to maintain a web directory was
evidence of bad faith because that respondent presumably benefited commercially
by receiving click-through fees for diverting Internet users to unrelated
third-party websites); see also The
Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <mycircket.com> and <wwmycricket.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 15, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum