T-Mobile USA, Inc. dba MetroPCS v. wilson torres / grupo financiero venezolano S.R.L.
Claim Number: FA1511001647721
Complainant is T-Mobile USA, Inc. dba MetroPCS (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is wilson torres / grupo financiero venezolano S.R.L. (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metropcsshop.com> ('the Domain Name'), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 2015; the Forum received payment on November 18, 2015.
On November 19, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <metropcsshop.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 2015 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@metropcsshop.com. Also on November 23, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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's contentions can be summarised as follows:
Complainant is a provider of mobile communications services with a network reaching 260 million people throughout the United States. Complainant has used the METROPCS brand for wireless devices and communication services since at least as early as 2002. As of April 2013 there were approximately 9 million MetroPCS subscribers and the brand has since expanded into 30 additional markets. as a result of extensive use, advertising and commercial success the METROPCS trade mark has become famous. The Complainant also operates under the brand T-Mobile.
Complainant holds numerous registrations for METROPCS and associated marks registered before the Domain Name was registered in 2015.
METROPCS is used, inter alia, in logo form (the 'METROPCS logo') in relation to the Complainant’s business.
Complainant also uses the tagline and registered trade mark WIRELESS FOR ALL in relation to its business.
The Domain Name is confusingly similar to Complainant's registered METROPCS trade mark, incorporating it in its entirety, adding only the generic term 'shop' and the gTLD .com. These elements are insufficient to negate the confusing similarity between Respondent's domain name and Complainant's famous mark particularly where 'shop' relates directly to Complainant's retail outlets.
Respondent has not used the Domain Name in connection with a bona fide offering of goods and services, nor is it making a non-commercial fair use of it nor has it ever been known as MetroPCS or any variation thereof. Respondent is not affiliated with or licensed by the Complainant to use its brand in any way. Respondent does not have a legitimate interest in the Domain Name.
The landing page for the Domain Name is a fake 'official' 'MetroPCS Commercial Shop' that prominently displays the METROPCS Logo and Complainant's WIRELESS FOR ALL tagline and promotes competitors of the Complainant and spyware for mobile phones. It represents that it originates from the Complainant by use of the false copyright statement '(c) 2002-2015 T-Mobile USA, Inc.' The contact page provides an address at the Mall of the Americas in Florida and includes an image of a Metro PCS store. Complainant's only authorised dealer for the Mall of the Americas has no connection to Respondent or the Domain Name. Respondent is based in Venezuela. The Complainant does not operate outside the USA or engage foreign dealers.
Respondent's prominent and pervasive use of Complainants name and logo at the Domain Name and the Respondent's express misrepresentations as to source and affiliation are calculated and likely to confuse and mislead the public as to the source of the Respondents site and constitute passing off. This is not a fair or legitimate use.
Respondents use of Complainants logo to attract customers to its unrelated commercial spyware business or to competing wireless service providers is also not a use in connection with bona fide offering of goods or services.
Respondent has no rights or legitimate interests in the Domain Name.
Respondent registered and used the Domain Name in bad faith.
The fact that the site at the Domain Name features a fake official MetroPCS shop and false T-Mobile copyright notice shows the Complainant is aware of the Complainant’s business and registered the Domain Name with knowledge of the Complainant’s rights and intended to create an association with Complainant and its products and services.
Respondents misrepresentation as to the origin of its site and promotion of commercial spyware using the complainants brand is bad faith conduct under Policy 4(b)(iv).
Use of the Complainants marks to promote competing wireless service providers diverts and disrupts Complainant's business and falls under Policy 4(b)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has used the METROPCS brand for wireless devices and communication services since at least as early as 2002. Complainant holds trade mark registrations for METROPCS and associated marks for its services registered in the USA before the Domain Name was registered in 2015.
The Domain Name is attached to a site that uses the METROPCS Logo as its header and the Complainant's WIRELESS FOR ALL tagline and promotes competitors of the Complainant and software for mobile phones which is not connected to the Complainant.
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.”).
Apart from the .com suffix which is not taken into account for the purposes of the Policy, the Domain Name consists of the Complainants METROPCS registered trade mark and the generic word shop. see Jerry Damson Inc. v Tex Intl Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr 10, 2007) ("The mere addition of a generic top-level domain ("gTLD") ".com" does not serve to adequately distinguish the Domain Name from the mark.")
The addition of the word shop does not serve to distinguish the Domain Name from the Complainants mark. See Broadcom Corp v Domain Depot FA 96854 (Nat. Arb. Forum Apr 23 2001) (finding the broadcomonline.com domain name is confusingly similar to the complainant's BROADCOM mark).
As such, the Panelist finds that the Domain Name is confusingly similar to the Complainants registered trade mark METROPCS for the reasons given above and as such the Complainant satisfies para 4(a) (i) of the Policy.
The Panelist has had an opportunity to review the Respondent's web site and is of the opinion that it gives the impression that it is an official site of the Complainant when it is not authorised. It was not clear to the panellist upon a quick review of the site that it was not the site of the Complainant and unauthorised. The use of the Domain Name in relation to a site using the METROPCS logo and a copyright notice referring to another of the Complainant's trademarks gives the impression that the user has found the Complainant. As such the web site must be considered to be misleading and the Respondent passing itself off as connected with the Complainant when it is not. Passing off is evidence that the Respondent lacks rights or legitimate interests in the Domain Name. See Am. Int'l Group Inc. v Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent's attempts to pass itself off as the Complainant online was evidence that the Respondent has no rights or legitimate interests in the disputed domain name); see also Dream Horse Classifieds v Mosely FA 381256 (Nat. Arb. Forum Feb, 8 2005) (finding that the respondent's attempts to pass itself off as the complainant was evidence that the respondent lacked rights and legitimate interests.)
The Respondent has not responded to the Complaint and not provided any reason why its registration or use of the Domain Name is legitimate or based on any rights of the Respondent.
As such, the panelist finds that the Respondent lacks any rights or legitimate interests in the Domain Name.
Having found that the Respondent's web site is confusing and misleading the panelist believes that the Respondent is attempting to pass itself off as the Complainant and has intentionally attempted to attract for commercial gain internet users to its web site by creating a likelihood of confusion by using the Complainant's marks and logo as to the source or endorsement of its web site under Para 4 (b) (iv) of the Policy. See Asbury Auto, Group, Inc v Tex, Int'l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent's use of the domain name to advertise car dealerships that competed with the Complainant's business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith registration and use pursuant to Policy 4(b)(iv)).
As such the panelist finds that the Domain Name has been registered and used in bad faith and does not need to consider any further arguments of the Complainant for further grounds of bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metropcsshop.com> domain name be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<January 5, 2016>>
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