national arbitration forum

 

DECISION

 

Cricket Communications, Inc. v. Domain Admin / Taranga Services Pty Ltd

Claim Number: FA1007001336335

 

PARTIES

Complainant is Cricket Communications, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com>, registered with Moniker.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2010.

 

On July 22, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, <mycricketcom.com> domain names are registered with Moniker and that Respondent is the current registrant of the names.  Moniker has verified that Respondent is bound by the Moniker 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 July 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@cricketcommunicatons.com, postmaster@cricketcomunications.com, postmaster@crickettcommunications.com, postmaster@crickettwireless.com, and postmaster@mycricketcom.com.  Also on July 27, 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 August 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr.,  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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, <mycricketcom.com> domain names are confusingly similar to Complainant’s CRICKET mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com> domain names.

 

3.      Respondent registered and used the <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Cricket Communications, Inc., provides unlimited wireless service through a variety of flat-rate plans without requiring credit checks or long-term commitments.    Complainant offers its services and products through retail outlets and online at the <mycricket.com> domain name.  Complainant owns trademark registrations for the CRICKET mark with the United States Patent and Trademark Office (“USPTO”):

 

Reg. No. 2,363,821                 issued July 4, 2000;

Reg. No. 2,359,369                 issued June 20, 2000; and

Reg. No. 2,359,370                 issued June 20, 2000.

 

Respondent, Domain Admin / Taranga Services Pty Ltd, registered the <cricketcomunications.com> domain name on September 28, 2004; the <crickettwireless.com> domain name on April 27, 2005; the <cricketcommunicatons.com> and <crickettcommunications.com> domain names on November 26, 2005, and the <mycricketcom.com> domain name on April 28, 2007.

 

Respondent has previously been the respondent in at least four other UDRP proceedings in which the disputed domain names were transferred to the respective complainants.  See Am. Airlines v. Taranga Servs. Pty Ltd, FA 1302684 (Nat. Arb. Forum Mar. 9, 2010); see also Avid David Life Inc. v. Taranga Servs. Pty Ltd, FA 137872 (Nat. Arb. Forum Apr.6, 2010); see also Capital One Fin. Corp. v. Domain Admin a/k/a Taranga Servs. Pty Ltd, FA 1285637 (Nat. Arb. Forum Nov. 2, 2009).

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant owns trademark registrations for the CRICKET mark with the USPTO:

 

Reg. No. 2,363,821                 issued July 4, 2000;

Reg. No. 2,359,369                 issued June 20, 2000; and

Reg. No. 2,359,370                 issued June 20, 2000.

 

The Panel finds that evidence of USPTO trademark registration sufficiently proves Complainant has rights in the CRICKET mark for the purposes of Policy ¶ 4(a)(i), even though Respondent may live or operate in a different country.  See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration 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 the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).

 

Complainant alleges that Respondent’s <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com> domain names are confusingly similar to Complainant’s CRICKET mark because each disputed domain name includes Complainant’s mark along with one or more of the following descriptive, and sometimes misspelled, terms:  “communicatons,” “comunications,” “communications,” “wireless,” “my,” and “com.”  The <crickettcommunications.com> and <crickettwireless.com> domain names also add an extra letter “t” to Complainant’s mark.  All of the disputed domain names attach the generic top-level domain (“gTLD”) “.com.”  The Panel finds that adding an extra descriptive term or letter to Complainant’s mark fails to differentiate the disputed domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Am.Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding that the respondent’s domain name, <americanonline.com>, is confusingly similar to the complainant’s famous AMERICA ONLINE mark); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”).  The Panel also finds that the addition of the gTLD “.com” has no bearing on whether the disputed domain names are confusingly similar to Complainant’s mark.  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 the domain name for the purpose of determining whether it is identical or confusingly similar).  Therefore, the Panel finds that Respondent’s <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com> domain names are confusingly similar to Complainant’s CRICKET mark according to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

In arguing that Respondent does not possess rights and legitimate interests in the disputed domain names, Policy ¶ 4(a)(ii) requires Complainant to present a prima facie case against Respondent.  The Panel finds that Complainant’s allegations and supporting evidence are sufficient to establish such a prima facie, thereby transferring the burden to Respondent.  In light of Respondent’s failure to respond, the Panel concludes that Respondent does not contest Complainant’s allegations and does not assert, or possess, rights and legitimate interests under Policy ¶ 4(a)(ii).  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 Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).  The Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors, however, to independently determine whether Respondent has rights and legitimate interests in the disputed domain names.

 

Complainant argues that Respondent is not commonly known by the <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com> domain names because the WHOIS information for the disputed domain names does not reflect any association between the registrant and the disputed domain names and because Respondent has not been given permission to use Complainant’s mark.  Based on this evidence and the lack of other affirmative evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain names and lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).  See 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). 

 

Complainant contends that Respondent uses the <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com> domain names to link to web pages that serve as directories for pay-per-click links to other web pages offering competing phone and cellular services and products.  The Panel holds that Respondent’s exploitation of Complainant’s CRICKET mark to link Complainant’s intending customers to Complainant’s competitors does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use required by Policy ¶¶ 4(c)(i) and 4(c)(iii).  See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent has previously been the respondent in at least four other UDRP proceedings in which the disputed domain names were transferred to the respective complainants.  See Am. Airlines v. Taranga Servs. Pty Ltd, FA 1302684 (Nat. Arb. Forum Mar. 9, 2010); see also Avid David Life Inc. v. Taranga Servs. Pty Ltd, FA 137872 (Nat. Arb. Forum Apr.6, 2010); see also Capital One Fin. Corp. v. Domain Admin a/k/a Taranga Servs. Pty Ltd, FA 1285637 (Nat. Arb. Forum Nov. 2, 2009).  As this is evidence of Respondent’s pattern of registering domain names appropriating third-party marks, the Panel finds that this history of domain name registration and negative UDRP outcomes indicates that Respondent registered and uses the disputed domain names in bad faith according to Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); 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 alleges that the <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com> domain names resolve to websites featuring advertisements in the form of pay-per-click links to other websites and providers of cellular products and services that are not affiliated with Complainant.  This use of Complainant’s mark is disruptive to Complainant’s business as Complainant’s intending customers may be diverted away from Complainant’s actual website to competing websites.  The Panel finds that using the disputed domain names to divert Internet users and disrupt Complainant’s business through competition demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See 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); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant contends that Respondent incorporates Complainant’s CRICKET mark into the <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com> domain names because Respondent aims to capitalize on the renown of Complainant’s goodwill and draw Internet users to Respondent’s resolving website.  Complainant asserts that Respondent has populated the resolving websites with pay-per-click links and that traffic to Respondent’s sites may be confused about the affiliation between Complainant and Respondent due to the use of Complainant’s mark in the disputed domain names and in the links displayed on the resolving websites.  These confused Internet users can turn into profit for Respondent if they click on the pay-per-click links, which is likely Respondent’s ultimate goal.  The Panel finds that Respondent’s efforts to profit by misleading and attracting Complainant’s customers indicate bad faith registration and use under Policy    ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <cricketcommunicatons.com>, <cricketcomunications.com>, <crickettcommunications.com>, <crickettwireless.com>, and <mycricketcom.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 1, 2010

 

 

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