Cricket Communications, Inc. v. Hemang Infrasructure Private Limited
Claim Number: FA1005001324431
Complainant is Cricket
Communications, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mycrickit.com> and <cricketcelluar.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2010.
On May 14, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <mycrickit.com> and <cricketcelluar.com> domain names are registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 20, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 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@mycrickit.com and postmaster@cricketcelluar.com by e-mail. Also on May 20, 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 Honorable Paul A. Dorf (Ret.) 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 "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:
1. Respondent’s <mycrickit.com> and <cricketcelluar.com> domain names are confusingly similar to Complainant’s CRICKET mark.
2. Respondent does not have any rights or legitimate interests in the <mycrickit.com> and <cricketcelluar.com> domain names.
3. Respondent registered and used the <mycrickit.com> and <cricketcelluar.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cricket Communications, Inc.,
is a
Respondent registered the <mycrickit.com> domain name on November 14, 2003 and the <cricketcelluar.com> domain name on October 3, 2005. Respondent’s disputed domain names resolve to websites that display search pages and various third-party links under the heading “related searches” that direct Internet users to wireless telephone services and products of Complainant’s competitors.
Complainant offers evidence that Respondent has a history of registering domain names that infringe upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Blu Media, Inc. v. Hemang Infrastructure Private Ltd., FA 1305977 (Nat. Arb. Forum Mar. 22, 2010); see also Mohegan Tribal Gaming Auth. v. Hemang Infrastructure Private Ltd., FA 1316787 (Nat. Arb. Forum May 12, 2010).
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.
The Panel finds that Complainant has produced evidence to establish rights in its CRICKET mark under Policy ¶ 4(a)(i) through its valid trademark registrations with the USPTO (e.g., Reg. No. 2,359,369 issued June 20, 2000). The Panel also finds that Complainant need not establish trademark rights in the country of Respondent’s residence under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant contends that Respondent’s <mycrickit.com> and <cricketcelluar.com> domain names are confusingly similar to Complainant’s CRICKET mark. Complainant notes that the <mycrickit.com> domain name contains the prefix “my” and a misspelled version of its mark by replacing the letter “e” with the letter “i.” Complainant further notes that the <cricketcelluar.com> domain name contains its mark entirely with the addition of the misspelled descriptive term “cellular,” which leaves out the letter “l.” Complainant argues that the term “cellular” refers directly to Complainant’s business in the wireless telephone industry. Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” in both disputed domain names is irrelevant for purpose of determining if the disputed domain names are confusingly similar to Complainant’s mark. Therefore, Complainant argues that the above referenced changes to its mark are not sufficient to create a domain name that is distinct from its mark. The Panel agrees and finds that Respondent’s <mycrickit.com> and <cricketcelluar.com> 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 Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <mycrickit.com> and <cricketcelluar.com> domain names. For Complainant to prevail in this action it must submit a prima facie case in support of its allegations. Once Complainant has established a prima facie case the burden of proof shifts to Respondent to show that it does have rights or legitimate interests in the <mycrickit.com> and <cricketcelluar.com> domain names. See 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.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has produced a prima facie case to support its allegations. The Panel further finds that due to Respondent’s failure to submit a Response to this proceeding, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed 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 Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). However, the Panel will analyze the factors listed in Policy ¶ 4(c) to determine if Respondent possesses rights or legitimate interests in the <mycrickit.com> and <cricketcelluar.com> domain names.
Complainant alleges that Respondent is not commonly known by the disputed domain names, and points to the WHOIS registration information for the disputed domain names as evidence of such. The WHOIS information does not indicate that Respondent is commonly known by the disputed domain names. Further, Complainant contends that Respondent is not sponsored or legitimately affiliated with Complainant in any way, and that Respondent has not been given permission to use Complainant’s mark in a domain name. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) based upon the WHOIS record and all other evidence on record. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant also alleges that Respondent is not using the <mycrickit.com> and <cricketcelluar.com>
domain names for a bona fide offering
of goods or services or a legitimate noncommercial or fair use. Complainant has submitted screen-shots of the
websites resolving from the disputed domain names as evidence that Respondent
lacks rights and interests in the disputed domain name. Complainant argues that Respondent is using
the <mycrickit.com> and <cricketcelluar.com>
domain names to redirect Internet users to Complainant’s competitors in the
wireless telephone market by displaying hyperlinks to such competitors on
Respondent’s websites, presumably for financial gain. The Panel finds that Respondent’s use of the <mycrickit.com> and <cricketcelluar.com>
domain names to divert Internet users seeking Complainant’s official
<mycricket.com> domain name to Complainant’s competitors is not a use in
connection with 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 Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s is a serial
cybersquatter that has repeatedly registered domain names that infringe upon
the trademark rights of others.
Complainant references past UDRP decisions against Respondent as
evidence of a pattern of bad faith registration of domain names of well known
parties. See Blu Media,
Inc. v. Hemang Infrastructure Private Ltd., FA 1305977 (Nat. Arb. Forum Mar. 22, 2010); see also Mohegan Tribal Gaming Auth. v.
Hemang Infrastructure Private Ltd., FA 1316787 (Nat. Arb. Forum May 12,
2010). The Panel finds that
Respondent’s history of registering domain names in bad faith is evidence of
bad faith in this case under Policy ¶ 4(b)(ii). See Crow v. LOVEARTH.net, FA 203208
(Nat. Arb. Forum Nov. 28, 2003) (finding a pattern of bad faith registration
and use pursuant to Policy ¶ 4(b)(ii) because the respondent had previously
acquired several domain names that reflected names of celebrities and requested
payment from such celebrities for the transfer of the domain name
registrations); see also Sony Kabushiki Kaisha v. Anderson,
FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering
domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent
previously registered domain names incorporating well-known third party
trademarks).
Complainant argues that
Respondent’s use of the disputed domain names to display third-party links to
competitors of Complainant results in loss of business for Complainant. Complainant has submitted screen-shot
evidence of Respondent’s websites to show that Respondent is using the disputed
domain names to divert Internet users seeking Complainant’s wireless products
to the wireless products of Complainant’s competitors. The Panel finds that Respondent’s use of the
disputed domain names to divert Internet users to Complainant’s competitors in
the wireless communications market is evidence that Respondent registered and
used the <mycrickit.com> and <cricketcelluar.com> domain names in bad faith
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 confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also Persohn
v. Lim, FA 874447 (Nat. Arb. Forum
Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
Complainant further alleges
that Respondent’s above referenced use of the disputed domain names is further
evidence of bad faith because Respondent presumable collects click-through fees
from the businesses that are advertised and displayed on Respondent’s websites. Complainant argues that such use for
Respondent’s financial and commercial gain is evidence of bad faith under
Policy ¶ 4(b)(iv). The Panel agrees and
finds that Respondent has registered and used the disputed domain names in bad faith
under Policy ¶ 4(b)(iv) through its use of the disputed domain names to attract
Internet users to its websites, presumably for financial gain. See
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 <mycrickit.com> and <cricketcelluar.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: June 16, 2010
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