iCall, Inc. v. Reliance Communications Ltd
Claim Number: FA1003001310577
PARTIES
Complainant is iCall, Inc. (“Complainant”), represented by Charles Carreon, of Online Media Law, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <relianceicall.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Mr. Calvin A. Hamilton as Chair of the Panel
Ms. Anne Wallace as Panelist
Mr. Judge Tyrus Atkinson as Panelist
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 26, 2010.
On March 1, 2010, Network Solutions, Inc.
confirmed by e-mail to the National Arbitration Forum that the <relianceicall.com> domain name
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 March 10, 2010, the Forum served the
Complaint and all Annexes, including a Written Notice of the Complaint, setting
a deadline of March 30, 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@relianceicall.com by e-mail.
Also on March 10, 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.
A timely Response was received and determined
to be complete on March 30, 2010.
Complainant filed an Additional Submission
with the Forum on April 5, 2010, which was determined to be in compliance with
Supplemental Rule #7.
Respondent filed an Additional Submission
with the Forum on April 12, 2010, which was determined to be in compliance with
Supplemental Rule #7.
On April 15, 2010,
pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Anne Wallace,
Judge Tyrus Atkinson as Panelists and Calvin
A. Hamilton as Chair of the Panel.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant operates the iCall® Service, a Voice-Over Internet Protocol
(“VoIP”) calling platform that operates on desktop computers and on the Apple
iPhone and iPod. iCall also offers wholesale VoIP
solutions through iCall®Carrier Services. iCall, Inc.
offers the iCall® Service in both free and paid versions.
<icall.com> domain was first registered on November 26, 1996 and the
iCall® Mark was first registered on October 6, 1998 (Reg. No. 2,194,066). In July 2004
Complainant’s CEO Arlo Gilbert acquired the <icall.com> domain and the
trademark rights to the iCall® Mark in order to use both the <icall.com>
domain and the iCall® Mark to offer the iCall® Service, and both are now held
as corporate assets of Complainant.
Complainant contends that it has used the <icall.com> domain and the
iCall® Mark exclusively for development, distribution and marketing VoIP
services.
Complainant states that it has “assiduously” maintained its ownership
rights in the iCall® Mark.
On October 3, 2008, iCall submitted its “Combined Declaration of Use in
Commerce & Application for Renewal of Registration of a Mark under Sections
8 & 9.”
On October 11, 2008, the USPTO renewed iCall’s ownership of the iCall®
Mark. On December 16, 2009, Complainant submitted its “Declaration of
Incontestability of a Mark under Section 15” with the USPTO. On January 26,
2010, the USPTO issued its Notice of Acknowledgment of §15 Declaration, thus
establishing the mark’s incontestability.
Complainant contends that in March 2009, specialized iCall® software
developed specifically for the Apple iPhone was approved for distribution
through the iPhone App Store.
Complainant asserts that iCall has never had any business relationship with
Respondent, and Respondent is not operating <relianceicall.com> under any license granted by iCall.
Respondent registered <relianceicall.com>
(the “Disputed Domain”) on August 11, 2008.
Complainant contends that the Disputed Domain is identical to the <icall.com>
domain with the exception of a legally insignificant
descriptive prefix “reliance”.
Complainant argues that Respondent has no legitimate rights or interests
with respect to the Domain Name because Respondent is not authorized or
licensed to use Complainant’s iCall® mark for any purpose. Nor has Respondent’s
business been commonly known as “Reliance I Call” or any variant thereof, but
rather has chosen to foment and exploit the confusion arising from
incorporating the iCall® Mark into the Disputed Domain. Furthermore,
Complainant asserts that Respondent intends to capitalize on the goodwill of
Complainant’s ICALL® mark on Respondent’s website by using different typestyles
for the descriptive prefix “reliance” and the phrase “icall” and a space
between two words, so as to call both visual and search-engine attention to the
iCall® Mark, separate from the “reliance” prefix.
Complainant asserts that Respondent registered the Disputed Domain in bad
faith because the registration was made nine years and eleven months after the issuance
of U.S. Trademark No. 2,194,066 for the iCall ® Mark. Consequently, according
to Complainant, Respondent’s registration of <relianceicall.com> was certainly made with knowledge that <icall.com>
had already been registered and was in active use by iCall to offer competing VoIP
services; and Respondent is using the <relianceicall.com>
domain to offer services that are essentially identical, and in direct
competition with the services offered by iCall through <icall.com>.
In its additional submissions Complainant contends that it is undisputed
that Respondent is a very large company with 100 Million users in
Complainant asserts that Respondent has presented no evidence of its
corporate intent in registering the domain. According to Complainant, Respondent
registered the disputed domain with knowledge of Complainant’s rights since the
doctrine of “constructive bad faith” applies.
Furthermore, Complainant contends that Respondent’s corporate knowledge can
also be inferred from its untimely procurement of registrations for “Reliance
iCall” in
Claimant asserts that Respondent has never used “RelianceiCall” as its
company name, nor has it been known by that name, nor is it registered as
RelianceiCall in any country, including
B. Respondent
Respondent, Reliance Communications Limited, is
Reliance has offered its telecommunications services under a variety of
brand names that utilize the RELIANCE mark.
As an integral part of its business, Reliance has offered its
telecommunications services through its many business websites. It has owned
many domain name registrations for its telecommunications services such as <relianceworldcall.com>,
<relianceglobalcall.com>, <relianceglobalcom.com>, <relianceindiacall.com>
and <relianceicall.com>.
The Reliance group began use of the RELIANCE mark in the 1970s when the
Indian trademark registration system was not widely employed. The RELIANCE mark
subsequently became so well known in
Reliance owns trademark registrations for its mark RELIANCE ICALL in the
(Serial Registration No. 2,502,534),
Respondent claims that the domain name <relianceicall.com>
and Complainant’s ICALL mark are far from identical because iCall consists only
of the generic letter “i” combined with the generic word “Call.” Adding, that
since the rise of the Internet, many entities have used the letter “i” as a
prefix meaning “Internet” followed by a generic or descriptive term to identify
Internet-based goods or services.
Respondent argues that it has legitimate rights or interests in the <relianceicall.com> domain name for
several reasons. First, Reliance owns trademark registrations in the
Respondent asserts that Reliance is commonly known and referred to as
“Reliance.” Moreover, on the <relianceicall.com>
site, Reliance brands its Internet-based calling service as Reliance iCall.
Respondent contends that long before it received notice of this dispute, it
has used its <relianceicall.com>
domain name to offer its Internet-based calling services under its registered RELIANCE
and RELIANCE ICALL trademarks.
Respondent claims that it registered the <relianceicall.com> domain name to advertise and sell its own
Internet-based calling services under its RELIANCE and RELIANCE ICALL
trademarks, fully consistent with its other telecommunications services
businesses.
Respondent asserts that it has not intentionally attempted to attract for
commercial gain Internet users to its site by creating a likelihood of
confusion with the ICALL mark.
C. Additional Submissions
Complainant filed an Additional Submission
with the Forum on April 5, 2010, which was determined to be in compliance with
Supplemental Rule #7. Complainant argues in this submission several legal
points pursuant to
Respondent filed an Additional Submission
with the Forum on April 12, 2010, which was determined to be in compliance with
Supplemental Rule #7.
FINDINGS
Complainant, iCall, Inc. operates the iCall® Service, a Voice-Over Internet Protocol (“VoIP”) calling platform that operates on desktop computers and on the Apple iPhone and iPod. iCall also offers wholesale VoIP solutions through iCall®Carrier Services. iCall, Inc. offers the iCall® Service in both free and paid versions.
<icall.com> domain was first registered on November 26, 1996 and the iCall® Mark was first registered on October 6, 1998 (Reg. No. 2,194,066).
In July 2004 Complainant’s CEO Arlo Gilbert acquired the <icall.com> domain and the trademark rights to the iCall® Mark in order to use both the <icall.com> domain and the iCall® Mark to offer the iCall® Service, and both are now held as corporate assets of Complainant.
On October 3, 2008, iCall submitted its “Combined Declaration of Use in Commerce & Application for Renewal of Registration of a Mark under Sections 8 & 9.”
On October 11, 2008, the USPTO renewed iCall’s ownership of the iCall® Mark.
On December 16, 2009, Complainant submitted its “Declaration of Incontestability of a Mark under Section 15” with the USPTO.
On January 26, 2010, the USPTO issued its Notice of Acknowledgment of §15 Declaration, thus establishing the mark’s incontestability.
In March 2009, iCall® developed a software specifically for the Apple iPhone, which was approved for distribution through the iPhone App Store.
Respondent, known under company Reliance Communications Limited, is
Reliance has offered its telecommunications services under a variety of brand names that utilize the RELIANCE mark.
As an integral part of its business, Reliance has offered its telecommunications services through its many business websites. It has owned many domain name registrations for its telecommunications services such as <relianceworldcall.com>, <relianceglobalcall.com>, <relianceglobalcom.com>, <relianceindiacall.com> and <relianceicall.com>.
The Reliance group began use of the RELIANCE mark in the 1970s when the
Indian trademark registration system was not widely employed. The RELIANCE mark
subsequently became so well known in
On April 5, 2005 the mark RELIANCE was registered in
Between 2004 and 2009 the mark RELIANCE was registered in Europe, Asia
and
Reliance owns trademark registrations for its mark RELIANCE ICALL in the
Reliance registered <relianceicall.com> (the “Disputed Domain”) on August 11, 2008.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(1) the Respondent has no rights or legitimate interests in respect of the domain name; and
(2) the domain name has been registered and is being used in bad faith.
Complainant, iCall, Inc., claims that it offers Voice-Over Internet Protocol (“VoIP”) that allows Internet users to make voice communications through computers or Apple’s iPhone and iPod. Complainant contends and provided evidence that it holds a trademark registration with the United States Patent and Trademark Office ("USPTO") for its ICALL mark (Reg. No. 2,194,066 issued October 6, 1998).
Per this
registration, Complainant has established rights in the marks pursuant to
Policy ¶ 4(a)(i). As the panel in Morgan
Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat.
Arb. Forum Nov. 29, 2005) stated, “The Panel finds from a preponderance of the evidence that Complainant
has registered its mark with national trademark authorities. The Panel has
determined that such registrations present a prima facie case of
Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”
In the same sense,
The Panel agrees that the registration of a mark with the USPTO sufficiently meets the prima facie requirements under Policy ¶ 4(a)(i). The issuance of a Registration certificate by the empowered authority on trademark matters is a scheme to regulate trade and commerce in relation to trademarks, and unless registration is shown invalid, it gives its owner the exclusive right to the use of said trademarks in respect to those wares or services for which it is registered.
Complainant alleges that Respondent’s <relianceicall.com> domain name is confusingly similar to Complainant’s ICALL mark. Complainant argues that the disputed domain name adds the generic term “reliance” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The addition of a generic term and gTLD does not adequately distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent
alleges that its <relianceicall.com> domain name is not
confusingly similar to Claimant’s ICALL trade mark. Respondent
claims that the term “reliance” reflects Respondent’s RELIANCE mark.
Respondent argues that the addition of Respondent’s mark to Complainant’s
alleged mark ensures that the disputed domain name is not confusingly similar
to Complainant’s mark and concludes that the <relianceicall.com> domain
name is not confusingly similar to Complainant’s ICALL mark under Policy ¶
4(a)(i).
Respondent contends that the <relianceicall.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, however, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. A parties’ trademark registration of a mark overcomes the argument that the mark is generic. Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)).
On the one hand, and as was stated by previous panels, the incorporation of a trademark in its entirety within a domain name is sufficient to establish that said domain name is identical or confusingly similar to the complainant’s registered mark. Revlon Consumer Prods. Corp. v. Farris, D2003-0291 (WIPO June, 4 2003) (finding the respondent’s <iloverevlon.com> and <iloverevlon.com> domain names confusingly similar to Complainant’s REVLON mark because the “addition of a generic terms “I” and “love” did not distinguish the domain names so as to avoid confusion).
However, our case is different. In the case before us “Reliance” is not a descriptive/generic word, since a parties’ trademark registration overcomes the genericness. Moreover, Complainant has submitted no evidence to establish either fame or strong secondary meaning in its mark such that consumers are likely to associate <relianceicall.com> only with ICALL mark (as it in the case of REVLON mark). On the contrary, Respondent has demonstrated, the term "icall" is in widespread use in a descriptive sense.
The Panel
finds therefore, that the domain name registered by the Respondent is not
confusingly similar to a trademark or service mark in which the Complaint has
rights. Thus, the panel finds that Respondent’s <relianceicall.com>
domain name is not confusingly similar to Complainant’s ICALL mark pursuant
to Policy ¶ 4(a)(i).
The Panel declines to analyze the other elements of the Policy because Complainant must prove all three elements under Paragraph 4(a) of the Policy to prevail in this proceeding, and it failed to prove the element listed in Paragraph 4(a)(i).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Calvin A. Hamilton, Chair of the Panel
Anne Wallace, Panelist
Judge Tyrus Atkinson, Panelist
Dated: April 29, 2010
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