Cricket Communications, Inc. v. Domain Name Proxy, LLC aka Navigation Catalyst Systems, Inc.
Claim Number: FA1005001324492
Complainant is Cricket
Communications, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <cricketphonestore.com>, <cricketstores.com>, <freecricketringtones.com>, <mecricket.com>, <mmycricket.com>, <my-cricket.com>, <mychricket.com>, <mycrciket.com>, <mycriceket.com>, <mycricekt.com>, <mycrichet.com>, <mycrickcet.com>, <mycrickect.com>, <mycricked.com>, <mycricker.com>, <mycrickety.com>, <mycrickeyt.com>, <mycrickte.com>, <mycriclet.com>, <mycrocket.com>, <mycrricket.com>, <mycrycket.com>, <mydricket.com>, <myericket.com>, <mygricket.com>, <mykricket.com>, <myrcricket.com>, <mysricket.com>, <myvricket.com>, and <mywirelesscricket.com>, registered with Basic Fusion, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2010.
On May 20, 2010, Basic Fusion, Inc. confirmed by e-mail to the National Arbitration Forum that the <cricketphonestore.com>, <cricketstores.com>, <freecricketringtones.com>, <mecricket.com>, <mmycricket.com>, <my-cricket.com>, <mychricket.com>, <mycrciket.com>, <mycriceket.com>, <mycricekt.com>, <mycrichet.com>, <mycrickcet.com>, <mycrickect.com>, <mycricked.com>, <mycricker.com>, <mycrickety.com>, <mycrickeyt.com>, <mycrickte.com>, <mycriclet.com>, <mycrocket.com>, <mycrricket.com>, <mycrycket.com>, <mydricket.com>, <myericket.com>, <mygricket.com>, <mykricket.com>, <myrcricket.com>, <mysricket.com>, <myvricket.com>, and <mywirelesscricket.com> domain names are registered with Basic Fusion, Inc. and that Respondent is the current registrant of the names. Basic Fusion, Inc. has verified that Respondent is bound by the Basic Fusion, Inc. 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 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@cricketphonestore.com, postmaster@cricketstores.com, postmaster@freecricketringtones.com, postmaster@mecricket.com, postmaster@mmycricket.com, postmaster@my-cricket.com, postmaster@mychricket.com, postmaster@mycrciket.com, postmaster@mycriceket.com, postmaster@mycricekt.com, postmaster@mycrichet.com, postmaster@mycrickcet.com, postmaster@mycrickect.com, postmaster@mycricked.com, postmaster@mycricker.com, postmaster@mycrickety.com, postmaster@mycrickeyt.com, postmaster@mycrickte.com, postmaster@mycriclet.com, postmaster@mycrocket.com, postmaster@mycrricket.com, postmaster@mycrycket.com, postmaster@mydricket.com, postmaster@myericket.com, postmaster@mygricket.com, postmaster@mykricket.com, postmaster@myrcricket.com, postmaster@mysricket.com, postmaster@myvricket.com, postmaster@mywirelesscricket.com. Also on May 25, 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 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 (the "Rules") "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 the Respondent to the Complainant
A. Complainant makes the following assertions:
1. Respondent’s <cricketphonestore.com>, <cricketstores.com>, <freecricketringtones.com>, <mecricket.com>, <mmycricket.com>, <my-cricket.com>, <mychricket.com>, <mycrciket.com>, <mycriceket.com>, <mycricekt.com>, <mycrichet.com>, <mycrickcet.com>, <mycrickect.com>, <mycricked.com>, <mycricker.com>, <mycrickety.com>, <mycrickeyt.com>, <mycrickte.com>, <mycriclet.com>, <mycrocket.com>, <mycrricket.com>, <mycrycket.com>, <mydricket.com>, <myericket.com>, <mygricket.com>, <mykricket.com>, <myrcricket.com>, <mysricket.com>, <myvricket.com>, and <mywirelesscricket.com> domain names are confusingly similar to Complainant’s CRICKET mark.
2. Respondent does not have any rights or legitimate interests in the <cricketphonestore.com>, <cricketstores.com>, <freecricketringtones.com>, <mecricket.com>, <mmycricket.com>, <my-cricket.com>, <mychricket.com>, <mycrciket.com>, <mycriceket.com>, <mycricekt.com>, <mycrichet.com>, <mycrickcet.com>, <mycrickect.com>, <mycricked.com>, <mycricker.com>, <mycrickety.com>, <mycrickeyt.com>, <mycrickte.com>, <mycriclet.com>, <mycrocket.com>, <mycrricket.com>, <mycrycket.com>, <mydricket.com>, <myericket.com>, <mygricket.com>, <mykricket.com>, <myrcricket.com>, <mysricket.com>, <myvricket.com>, and <mywirelesscricket.com>domain names.
3. Respondent registered and used the <cricketphonestore.com>, <cricketstores.com>, <freecricketringtones.com>, <mecricket.com>, <mmycricket.com>, <my-cricket.com>, <mychricket.com>, <mycrciket.com>, <mycriceket.com>, <mycricekt.com>, <mycrichet.com>, <mycrickcet.com>, <mycrickect.com>, <mycricked.com>, <mycricker.com>, <mycrickety.com>, <mycrickeyt.com>, <mycrickte.com>, <mycriclet.com>, <mycrocket.com>, <mycrricket.com>, <mycrycket.com>, <mydricket.com>, <myericket.com>, <mygricket.com>, <mykricket.com>, <myrcricket.com>, <mysricket.com>, <myvricket.com>, and <mywirelesscricket.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cricket Communications, Inc., is a provider of wireless services both in retail outlets and online. Complainant offers flat-rate plans and does not require credit checks or long-term commitments. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CRICKET mark:
Reg. No. 2,359,369 issued June 20, 2000
Reg. No. 2,359,370 issued June 20, 2000
Reg. No. 2,363,821 issued July 4, 2000
Respondent, Domain Name Proxy, LLC aka Navigation Catalyst
Systems, Inc., registered the <cricketphonestore.com>,
<cricketstores.com>, <freecricketringtones.com>, <mecricket.com>,
<mmycricket.com>, <my-cricket.com>, <mychricket.com>,
<mycrciket.com>, <mycriceket.com>, <mycricekt.com>,
<mycrichet.com>, <mycrickcet.com>, <mycrickect.com>,
<mycricked.com>, <mycricker.com>, <mycrickety.com>,
<mycrickeyt.com>, <mycrickte.com>, <mycriclet.com>,
<mycrocket.com>, <mycrricket.com>, <mycrycket.com>,
<mydricket.com>, <myericket.com>, <mygricket.com>,
<mykricket.com>, <myrcricket.com>, <mysricket.com>,
<myvricket.com>, and <mywirelesscricket.com> domain
names not earlier than June 30, 2004.
Respondent’s disputed domain names resolve to simple websites listing
numerous links to unrelated third-party websites and third-party websites that
compete with Complainant by offering wireless phone services and products.
Respondent has been the respondent in at least three other UDRP proceedings in which the disputed domain names were transferred to the respective complainants in those proceedings. See Esnard v. Navigation Catalyst Sys., Inc., FA 1230381 (Nat. Arb. Forum Dec. 16, 2008); The Royal Bank of Scotland Group plc v. Navigation Catalyst Sys., Inc., FA 813065 (Nat. Arb. Forum Nov. 21, 2006); mVisible Technologies, Inc. v. Navigation Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 30, 2007).
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus the Panel chooses to proceed with the instant proceedings.
Complainant owns numerous trademark registrations with the USPTO for the CRICKET mark:
Reg. No. 2,359,369 issued June 20, 2000
Reg. No. 2,359,370 issued June 20, 2000
Reg. No. 2,363,821 issued July 4, 2000
The Panel finds that Complainant’s registrations of its
CRICKET mark with the USPTO adequately establish its rights in the mark for the
purposes of Policy ¶ 4(a)(i). 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)).
Complainant alleges
that Respondent’s disputed domain names are confusingly similar to
Complainant’s CRICKET mark. All of
Respondent’s disputed domain names include one or more of the following generic
or descriptive terms: “phone,” “store,”
“stores,” “free,” “ringtones,” “my,” “me,” and “wireless.” Additionally, some of the disputed domain
names misspell Complainant’s mark by transposing two letters, adding an extra
letter, or exchanging one letter for another, and one
disputed domain name inserts a hyphen between the added word and Complainant’s
mark. The disputed domain names all have
an appended generic top-level domain (“gTLD”) “.com.” The Panel finds that adding generic terms or
terms descriptive of Complainant or Complainant’s business does not remove the
disputed domain names from the realm of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb.
Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain
name confusingly similar to Complainant’s AMEX mark because the “mere addition
of a generic or descriptive word to a registered mark does not negate” a
finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA
318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed
domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX
marks. Each disputed domain name
contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds
nondistinctive, descriptive and generic terms, some of which describe
Complainant’s business.”). Hyphens, as punctuation marks, are not
sufficient to differentiate a disputed domain name from Complainant’s mark. Additionally, the Panel finds that the
addition of a hyphen does not remove the disputed domain name from the realm of
confusing similarity. See Health Devices Corp. v.
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case when alleging that Respondent lacks rights and legitimate interests. After Complainant adequately presents such a case, as the Panel finds Complainant did in this instance, the burden shifts to Respondent to demonstrate rights and legitimate interests in the disputed domain names. In this case, Respondent has failed to respond to the Complaint, indicating to the Panel that Respondent possesses no rights and legitimate interests in the disputed domain names and allowing the Panel to infer that Complainant’s allegations against Respondent are true as stated. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). In the interest of making an independent determination, however, the Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors.
Complainant contends that Respondent is not authorized to
use the CRICKET mark in the disputed domain names, is not affiliated with
Complainant, and is not commonly known by the disputed domain names. Complainant asserts that the WHOIS
information for the disputed domain names identifies the registrant as either
“Domain Name Proxy, LLC” or “Navigation Catalyst Systems, Inc.,” neither of
which reflects an association with any of the disputed domain names. The Panel finds that as the WHOIS information
does not indicate that Respondent is commonly known by the disputed domain
names, Respondent is not so known and therefore lacks rights and legitimate
interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Complainant alleges
that Respondent’s disputed domain names redirect Internet users to various
websites that list a collection of third-party, presumably pay-per-click, links. Complainant
argues that some of the links featured, such as those for “airline tickets,”
“free credit report,” or “health insurance,” are unrelated to Complainant,
while other links compete with Complainant’s wireless phone service business by
offering “cellular phone service,” “blackberry” or “phone repair” or by
redirecting Internet users to competitors like Samsung and Verizon
Wireless. The Panel finds that using the
disputed domain names as a pathway to carry Complainant’s intending customers
away from Complainant to competitors or other distracting sites is not a bona
fide offering of goods or services according to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Constellation Wines
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant argues that Respondent uses the disputed domain names to host numerous pay-per-click links that are disruptive to Complainant’s business as many of the links compete with Complainant’s wireless phone service and products. The Panel finds that the presence of competing pay-per-click links on Respondent’s websites resolving from the disputed domain names reveal that Respondent registered and uses the disputed domain names in bad faith according to Policy ¶ 4(b)(iii) in an effort to disrupt Complainant’s business. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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 alleges that the various links on Respondent’s
resolving websites are pay-per-click links.
Complainant contends that Respondent appropriates Complainant’s CRICKET
mark in the disputed domain name in order to attract Internet users seeking
Complainant’s wireless phone service and products to Respondent’s sites that
offer both similar and unrelated services and products. Complainant asserts that the resolving
websites often display content or keywords referring to Complainant, which
increases the likelihood that Internet users will be confused about any
association or affiliation between Complainant and Respondent. Once Internet users arrive at Respondent’s
various websites, their likely confusion could cause them to click on
Respondent’s pay-per-click links, thereby generating revenue for Respondent. The Panel finds that placing pay-per-click links
on the resolving websites in an attempt to profit from the attraction and
confusion created by Complainant’s mark in the disputed domain names
demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Constellation Wines
The Panel finds 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 <cricketphonestore.com>, <cricketstores.com>, <freecricketringtones.com>, <mecricket.com>, <mmycricket.com>, <my-cricket.com>, <mychricket.com>, <mycrciket.com>, <mycriceket.com>, <mycricekt.com>, <mycrichet.com>, <mycrickcet.com>, <mycrickect.com>, <mycricked.com>, <mycricker.com>, <mycrickety.com>, <mycrickeyt.com>, <mycrickte.com>, <mycriclet.com>, <mycrocket.com>, <mycrricket.com>, <mycrycket.com>, <mydricket.com>, <myericket.com>, <mygricket.com>, <mykricket.com>, <myrcricket.com>, <mysricket.com>, <myvricket.com>, and <mywirelesscricket.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 24, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum