T-Mobile USA, Inc. v. Mark Zalewski / mytouchhdaccessories / onlyg2accessories / t-mobileg2accessories
Claim Number: FA1205001446547
Complainant is T-Mobile USA, Inc. (“Complainant”), represented by Matt Schneller of Bracewell & Giuliani LLP, Washington, USA. Respondent is Mark Zalewski / mytouchhdaccessories / onlyg2accessories / t-mobileg2accessories (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mytouchqaccessories.com>, <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <mytouchhdaccessories.com>, <onlycliq.com>, <onlyg1.com>, <onlyg2accessories.com>, <onlymytouch.com>, <onlymytouch4g.com>, <onlysidekick.com>, and <t-mobileg2accessories.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 31, 2012; the National Arbitration Forum received payment May 31, 2012.
On June 1, 2012, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <mytouchqaccessories.com>, <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <mytouchhdaccessories.com>, <onlycliq.com>, <onlyg1.com>, <onlyg2accessories.com>, <onlymytouch.com>, <onlymytouch4g.com>, <onlysidekick.com>, and <t-mobileg2accessories.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2012, 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@mytouchqaccessories.com, postmaster@mytouch4gqaccessories.com, postmaster@mytouch4gaccessories.com, postmaster@mytouchhdaccessories.com, postmaster@onlycliq.com, postmaster@onlyg1.com, postmaster@onlyg2accessories.com, postmaster@onlymytouch.com, postmaster@onlymytouch4g.com, postmaster@onlysidekick.com, and postmaster@t-mobileg2accessories.com. Also on June 4, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 July 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 allegations in this proceeding:
1. Complainant has rights to or legitimate interests in the mark contained within the disputed domain names that Respondent registered.
2. Complainant maintains that each of the multiple names contains Complainant’s protected mark.
3. Complainant urges that these disputed domain names are each confusingly similar to Complainant’s protected mark.
4. Complainant contends that Respondent has no rights to or legitimate interests in the marks or the disputed domain names and Complainant has not permitted the Respondent to use its marks in anyway.
5. Complainant urges that Respondent registered and uses the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant established that it has rights to the marks contained within the disputed domain names here.
Complainant established that the disputed domain names are confusingly similar to Complainant’s protected marks.
Complainant established that Respondent has not rights to or legitimate interests in the disputed domain names containing Complainant’s protected marks.
Complainant established that Respondent registered and used the disputed domain names 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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Parties’ Contentions
i. MYTOUCH (Reg. No. 3,729,926 filed March 11, 2009; registered December 22, 2009);
ii. CLIQ (Reg. No. 3,725,982 filed June 25, 2007; registered December 15, 2009);
iii. G1 (Reg. No. 3,632,992 filed July 29, 2008; registered June 2, 2009);
iv. G2 (Reg. No. 3,883,434 filed October 30, 2008; registered November 30, 2010);
v. T-MOBILE G1 (Reg. No. 3,632,991 filed July 29, 2008; registered June 2, 2009); and
vi. SIDEKICK (Reg. No. 3,062,057 filed January 6, 2003; registered February 28, 2006).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant alleged that the entities that 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.” Complainant contends that the correct registrant and Respondent is Mark Zalewski. Complainant notes that the WHOIS registrant information changes only slightly between the disputed domain names, and that the domain names that identify a different registrant than Mark Zalewski identify Mark Zalewski as the administrative contact for the domain name. Complainant argues that although the disputed domain names contain some different contact information, the domain names are effectively controlled by one entity: Mark Zalewski.
The Panel finds that Complainant presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant asserts that it registered several trademarks with the USPTO as follows: MYTOUCH (Reg. No. 3,729,926 filed March 11, 2009; registered December 22, 2009); CLIQ (Reg. No. 3,725,982 filed June 25, 2007; registered December 15, 2009); G1 (Reg. No. 3,632,992 filed July 29, 2008; registered June 2, 2009); G2 (Reg. No. 3,883,434 filed October 30, 2008; registered November 30, 2010); T-MOBILE G1 (Reg. No. 3,632,991 filed July 29, 2008; registered June 2, 2009); and SIDEKICK (Reg. No. 3,062,057 filed January 6, 2003; registered February 28, 2006). Complainant argues that its trademark registrations are sufficient to establish rights its marks under Policy ¶ 4(a)(i). The Panel agrees and finds that Complainant offered sufficient evidence to establish rights in its marks under Policy ¶ 4(a)(i). 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)). Further, the Panel finds that Complainant’s rights in its marks date back to the respective filing dates with the USPTO identified above. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Complainant argues generally that the <mytouchqaccessories.com>, <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <mytouchhdaccessories.com>, <onlycliq.com>, <onlyg1.com>, <onlyg2accessories.com>, <onlymytouch.com>, <onlymytouch4g.com>, <onlysidekick.com>, and <t-mobileg2accessories.com> domain names are confusingly similar to Complainant’s marks. Because several of the disputed domain names contain a different trademark of Complainant, each domain name will be discussed individually relative to the trademark implicated.
First, the Panel notes that the <mytouchqaccessories.com>, <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <mytouchhdaccessories.com>, <onlymytouch.com>, and <onlymytouch4g.com> domain names contain Complainant’s MYTOUCH mark in addition to the letter “q,” the number “4,” the letter “g,” the letter “h,” the letter “d,” the generic terms “accessories” or “only,” and/or the generic top-level domain (“gTLD”) “.com.” The Panel finds that such changes do not render the disputed domain names distinct from the MYTOUCH mark, thereby rendering the disputed domain names confusingly similar to the mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also 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).
Further, the Panel notes that the <onlycliq.com> domain name contains Complainant’s CLIQ mark in addition to the generic term “only” and the gTLD “.com.” The Panel finds that the <onlycliq.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also 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).
The Panel also notes that the <onlyg1.com> domain name contains Complainant’s entire G1 mark in addition to the generic term “only” and the gTLD “.com.” The Panel finds that such changes do not distinguish the disputed domain name from Complainant’s mark, thus rendering the <onlyg1.com> domain name confusingly similar to the mark under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also 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).
The Panel finds that the <onlyg2accessories.com> domain name contains Complainant’s G2 mark entirely, while adding the generic terms “only” and “accessories,” as well as the gTLD “.com.” The Panel finds that the <onlyg2accessories.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also 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).
Further, the Panel notes that the <t-mobileg2accessories.com> domain name contains Complainant’s T-MOBILE G1 mark, albeit while removing the space between the terms and supplanting the number “2” in place of the number “1” in Complainant’s mark. The Panel further notes that the disputed domain name adds the generic term “accessories” and the gTLD “.com” as well. The Panel finds that the <t-mobileg2accessories.com> domain name is not distinguished from Complainant’s T-MOBILE G1 mark through the changes noted above and is therefore confusingly similar to the mark under Policy ¶ 4(a)(i). See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also 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).
Lastly, the Panel notes that the <onlysidekick.com> domain name contains Complainant’s entire SIDEKICK mark, while adding the generic term “only” and the gTLD “.com.” The Panel finds that the addition of a generic term and a gTLD are not sufficient to remove the disputed domain name from the realm of confusing similarity. Therefore, the Panel finds that the <onlysidekick.com> domain name is confusingly similar to the SIDEKICK mark under Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to marks in which Complainant has protected rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by any of the disputed domain names. The Panel notes that the <mytouchqaccessories.com>, <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <onlycliq.com>, <onlyg1.com>, <onlymytouch.com>, <onlymytouch4g.com>, and <onlysidekick.com>, domain names identify “Mark Zalewski” as the registrant per the WHOIS information. The Panel finds that Respondent is not commonly known by the <mytouchqaccessories.com>, <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <onlycliq.com>, <onlyg1.com>, <onlymytouch.com>, <onlymytouch4g.com>, and <onlysidekick.com> domain names under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Further, the Panel notes that the <t-mobileg2accessories.com>, <onlyg2accessories.com>, and <mytouchhdaccessories.com> domain names include the second level portion of the domain name as the registrant name in the WHOIS information. The Panel finds that, without any evidence from Respondent showing that it is commonly known by the disputed domain names containing such information, Respondent is not commonly known by the disputed domain names under 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”).
Complainant argues that Respondent’s <mytouchqaccessories.com> and <onlymytouch.com> domain names resolve to <androidtek.com>, a website that sells goods and accessories for Complainant’s phones and those of Complainant’s competitors. Further, Complainant asserts that Respondent’s <onlycliq.com> and <onlysidekick.com> domain names resolve to <mkwireless.com>, a website selling accessories for cellular phones of all types and providers. Complainant argues that such use of the disputed domain names is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use of the disputed domain names. The Panel notes that Complainant discusses what has become known as the Oki Data Americas, Inc. standard to argue that Respondent does not have rights or legitimate interests in the disputed domain names. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001). Complainant argues that Respondent sells accessories for Complainant’s phones, as well as accessories for others’ products. The Panel notes that typically the Oki Data Americas, Inc. case deals with a respondent that is marketing and selling a complainant’s trademarked goods, rather than redirecting Internet users to other websites selling accessories for those goods. The Panel agrees with Complainant, however, and finds that Respondent’s redirection of the disputed domain names to Complainant’s competitors 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). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant also argues that Respondent’s <onlycliq.com>, <onlyg1.com>, <onlymytouch.com>, <onlysidekick.com>, and <t-mobileg2accessories.com> domain names formerly resolved to websites selling accessories for mobile phones and smart phones sold under Complainant’s marks. The Panel also finds that such prior use of the disputed domain names 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Finally, Complainant asserts that Respondent’s <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <mytouchhdaccessories.com>, <onlyg2accessories.com>, and <onlymytouch4g.com> domain names do not resolve to active websites. The Panel finds that Respondent’s failure to make an active use of the disputed domain names is also 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). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s registration of the <mytouchqaccessories.com>, <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <mytouchhdaccessories.com>, <onlycliq.com>, <onlyg1.com>, <onlyg2accessories.com>, <onlymytouch.com>, <onlymytouch4g.com>, <onlysidekick.com>, and <t-mobileg2accessories.com> domain names is evidence of bad faith under Policy ¶ 4(b)(ii). Complainant also references other domain names that Respondent registered that, Complainant alleges, contain the trademarks of other companies. Complainant argues that these two instances are evidence of Respondent’s bad faith registration and use of the disputed domain names here. The Panel agrees and finds accordingly under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Further, Complainant argues that Respondent’s <mytouchqaccessories.com> and <onlymytouch.com> domain names resolve to <androidtek.com>, a website that sells Complainant’s goods and accessories and those of Complainant’s competitors. Further, Complainant asserts that Respondent’s <onlycliq.com> and <onlysidekick.com> domain names resolve to <mkwireless.com>, a website selling accessories for cellular phones of all types and providers. Further, Complainant argues that the <onlycliq.com>, <onlyg1.com>, <onlymytouch.com>, <onlysidekick.com>, and <t-mobileg2accessories.com> domain names formerly resolved to websites selling accessories for mobile phones and smart phones sold under Complainant’s marks. Complainant asserts that this conduct is evidence of bad faith registration and use under Policy ¶ 4(b)(iii), and the Panel agrees. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel also agrees with Complainant that Respondent’s registration and use of the disputed domain names to redirect Internet users to websites selling competing accessories for commercial gain is evidence of bad faith. The Panel notes that the <mytouchqaccessories.com> and <onlymytouch.com> domain names resolve to <androidtek.com>, a website that sells Complainant’s goods and accessories and those of Complainant’s competitors, and the <onlycliq.com> and <onlysidekick.com> domain names resolve to <mkwireless.com>, a website selling accessories for cellular phones of all types and providers. Further, the Panel notes that the <onlycliq.com>, <onlyg1.com>, <onlymytouch.com>, <onlysidekick.com>, and <t-mobileg2accessories.com> domain names formerly resolved to websites selling accessories for mobile phones and smart phones sold under Complainant’s marks. The Panel finds that Respondent created a likelihood of confusion with Complainant’s marks through the registration and use of the disputed domain names identified above and commercially benefits from that confusion, and the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
As to the <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <mytouchhdaccessories.com>, <onlyg2accessories.com>, and <onlymytouch4g.com> domain names, the Panel notes that the factors identified under Policy ¶ 4(b) are merely an illustrative list and were not meant to be an exhaustive list of bad faith factors. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Complainant argued that the <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <mytouchhdaccessories.com>, <onlyg2accessories.com>, and <onlymytouch4g.com> domain names do not resolve to active websites. The Panel finds this to be true and finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used or passively held the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mytouchqaccessories.com>, <mytouch4gqaccessories.com>, <mytouch4gaccessories.com>, <mytouchhdaccessories.com>, <onlycliq.com>, <onlyg1.com>, <onlyg2accessories.com>, <onlymytouch.com>, <onlymytouch4g.com>, <onlysidekick.com>, and <t-mobileg2accessories.com> domain names BE TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 12, 2012.
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