T-Mobile USA, Inc. v. Nikoloz Inasaridze
Claim Number: FA1403001546585
Complainant is T-Mobile USA, Inc. (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Nikoloz Inasaridze (“Respondent”), Georgia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metropcsphones.net>, registered with GODADDY.COM, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2014; the National Arbitration Forum received payment on March 4, 2014.
On March 4, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <metropcsphones.net> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 24, 2014 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@metropcsphones.net. Also on March 4, 2014, 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 April 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the METROPCS mark to provide cellular telephone and data services. Complainant has registered the METROPCS mark with the United States Patent and Trademark Office ("USPTO") (e.g., 2,803,097 registered January 6, 2004).
Respondent’s <metropcsphones.net> domain name is confusingly similar to the METROPCS mark. Respondent adds the term “phones” and the generic top-level domain (“gTLD”) “.net” to the METROPCS mark in forming the domain name.
Respondent is identified in the WHOIS information as “Nikoloz Inasaridze” and is not otherwise known by the <metropcsphones.net> domain name. Respondent is not affiliated or associated with Complainant in any manner. Respondent does not have permission to use the METROPCS mark in domain names.
Respondent is using the <metropcsphones.net> domain name to sell off counterfeits of Complainant’s goods and/or competing goods. Respondent falsely promotes competing Verizon products as being one and the same with Complainant’s goods.
Respondent is attempting to pass itself off as Complainant. Respondent offered to cancel the domain name in exchange for $1,000, illustrating Respondent’s lack of rights in the domain name.
Respondent is hosting malware on the domain name’s website.
Respondent’s offer to cancel the domain name for $1,000 is evidence of Respondent’s bad faith intentions. Respondent is disrupting Complainant’s goods by representing that competing phones, including competing Verizon phones, are associated with Complainant. Respondent and/or other third parties thus see financial gains while Complainant loses customers. Respondent profits through a likelihood that Internet users may mistakenly believe the <metropcsphones.net> domain name is a source of legitimate METROPCS goods.
Respondent had to have known of Complainant’s rights in the METROPCS mark prior to domain name registration. It is otherwise unlikely Respondent would independently create this domain name and use it to sell competing goods.
Respondent is causing the public to associate Complainant with malware.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the METROPCS mark.
Respondent is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in its METROPCS mark.
Respondent offered to cancel the domain name in exchange for $1,000.
Respondent uses the <metropcsphones.net> domain name to address a website that markets counterfeits of Complainant’s goods and/or competing goods.
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 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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates rights in the METROPCS mark by way of its USPTO trademark registration of such mark notwithstanding that Respondent may operate outside of the USPTO’s jurisdiction. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
In forming the at-issue domain name Respondent takes Complainant’s METROPCS mark, adds the term “phones” and appends the top-level domain name “.net” to the resulting string. The term “phones” suggests Complainant’s cellular telephone business Therefore, instead of distinguishing the two, the added term furthers a false associate between the <metropcsphones.net> domain name and Complainant’s METROPCS trademark. Given the foregoing, the Panel finds that the at-issue domain name is confusingly similar to Complainant’s METROPCS mark pursuant to Policy ¶ 4(a)(i). See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Nikoloz Inasaridze” and the record before the Panel contains no evidence that might otherwise tend to prove, contrary to the WHOIS information, that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See 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).
Respondent is attempting to pass itself off as Complainant by using a confusingly similar domain name, a color scheme on its <metropcsphones.net> website that is similar to the one Complainant uses, and by offering similar (if not identical) goods to those offered by Complainant under the METROPCS mark. Such use of the at-issue domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Additionally, Respondent offered to cancel its domain name in exchange for $1,000, further suggesting that Respondent lacks rights and interests in respect of the at-issue domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present as well as other circumstance which show that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as alluded to above, in correspondence between the parties Respondent states “I can’t cancel my domain because i spent money and energy to create this domain. if you pay me 1000$ i will cancel it.” Respondent’s offer to cancel the domain name in exchange for excessive financial compensation is evidence of Respondent’s bad faith intentions pursuant to Policy ¶ 4(b)(i) bad faith. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Next, by and through the at-issue <metropcsphones.net> domain name Respondent represents that competing phones, including competing Verizon phones, are associated with Complainant and actively markets such products. Thereby, Respondent and/or other third parties may benefit while Complainant may lose customers. Using the domain name in this manner disrupts Complainant’s business and demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (finding Policy ¶ 4(b)(iii) bad faith through disruption when the domain name was used to promote competing goods).
Furthermore, Respondent profits by creating the likelihood that Internet users may mistakenly believe the <metropcsphones.net> domain name is a source of legitimate METROPCS goods. Using the at-issue domain name to confuse website visitors into believing that Complainant sponsors Respondent’s website when it does not, demonstrates bad faith under Policy ¶4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Finally, Respondent knew of Complainant’s rights in the METROPCS mark prior to registering the at issue domain name. This conclusion is inescapable given the notoriety of Complainant’s trademark; given that Respondent’s combined Complainant’s mark with the suggestive term “phones” in forming the at-issue domain name; and from the fact that Respondent offers Complainant’s goods and/or competing goods under Complainant’s METROPCS trademark. See MetroPCS, Inc. v. Robertson, FA0609000809749 (Nat. Arb. Forum Nov. 13, 2006)(finding that Complainant’s goodwill in MetroPCS is well-established and that the mark is “well-known”). Registering a domain name that one knows is confusingly similar to the trademark of another indicates bad faith registration and use under Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metropcsphones.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 2, 2014
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