TelCan Inc. v. Amar Behura / Interactive Media Technologies
Claim Number: FA1703001724650
Complainant is TelCan Inc. (“Complainant”), represented by Jeffrey M. Rosenfeld of Kronenberger Rosenfeld, LLP, California, United States. Respondent is Amar Behura / Interactive Media Technologies (“Respondent”), represented by Lorri Lomnitzer of The Lomnitzer Law Firm, P.A., Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <telcan.com>, registered with Godaddy.Com, LLC.
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, David S. Safran, and Paul M. DeCicco (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on March 30, 2017; the Forum received payment on March 30, 2017.
On March 31, 2017, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <telcan.com> 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 April 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2017 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@telcan.com. Also on April 3, 2017, 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.
A timely Response was received and determined to be complete on April 28, 2017.
An Additional Submission was received from Complainant on May 3, 2017. An Additional submission was received from Respondent on May 8, 2017.
On May 15, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Dawn Osborne, David S. Safran and Paul M. DeCicco as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant registered the TELCAN mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,830,271, registered Oct. 13, 2015).
Since January of 1997, Complainant TelCan has continuously marketed and sold its telecommunications-related goods and services using the TELCAN mark both online and through brick-and-mortar channels, including cell phone and convenience stores in the United States and Canada. Complainant regularly spends six figures per year on marketing its goods and services in connection with the TELCAN mark. Further, TelCan actively advertises its goods and services online through Google AdWords and has advertised through newspapers, magazines, radio, and other websites.
Respondent’s <telcan.com> is identical to the TELCAN mark, as it merely adds the generic top-level domain (“gTLD”) “.com” to Complainant’s full mark.
Respondent has no rights or legitimate interests in <telcan.com>. Respondent also does not use the disputed domain name for any bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to directly compete with Complainant’s telecommunication services.
Respondent registered and uses the <telcan.com> domain name in bad faith. Respondent disrupts Complainant’s business by using the disputed domain name to advertise goods and services that compete directly with the goods and services offered by Complainant in connection with the TELCAN mark. Additionally, Respondent offered to sell the disputed domain name to Complainant for $50,000.00. Respondent also uses the disputed domain name to create a likelihood of confusion with Complainant’s mark and Respondent’s domain name. Further, Respondent registered the <telcan.com> domain name using false WHOIS information. Finally, Respondent registered the <telcan.com> domain name with actual or constructive knowledge of the TELCAN mark because of its first use in commerce in 1997, which was six years prior to the registration of the disputed domain name.
B. Respondent
Respondent contends as follows:
Complainant only has established subsequent rights to the <telcan.com> domain name, as alleged date of first use is irrelevant and the most accurate and applicable date is the date of filing for the trademark. Alternatively, both Respondent and Complainant were actively using their respective domain names in commerce as early as 2005, thus Complainant has merely established concurrent rights, not exclusive rights. The <telcan.com> domain name simply comprises of descriptive terms that describe the business operations engaged in by Respondent.
Respondent has offered legitimate telecommunications services at <telcan.com> since September 27, 2003, and continues to operate these services to this date. The brief change in design for the <telcan.com> domain name in 2007 merely changed the design, however Respondent continued to use the domain name to offer telecommunications services. Further, Respondent found the domain name applicable, because it desired to engage in the telecommunications industry in Canada, thus the domain name was a logical choice.
Respondent did not register the domain name for the purpose of selling it to Complainant, and even stated to Complainant that the disputed domain name is not for sale. The mere fact that Respondent, in 2007, offered the disputed domain name for sale for $50,000.00 does not evince bad faith, because it was a general, one-time solicitation to an inquiry that Respondent did not know was Complainant. Finally, constructive notice does not apply to these proceedings, and Respondent did not have actual knowledge of Complainant’s mark. Relatedly, Complainant fails to provide any evidence to establish that Respondent did have actual knowledge of Complainant’s mark.
Respondent contends that the doctrine of laches applies in the present case. Further, Respondent argues that Complainant engages in reverse domain name hijacking.
C. Additional Submissions
Complainant contends in its Additional Submission as follows:
Though the TELCAN mark was not registered until 2014, Complainant first used the mark in commerce on January 19, 1997, which establishes common law rights.
Complainant obtained nearly 45,000 new end user customers and hundreds of new agents and resellers (wholesale customers) in all areas of the world, including in Canada, Florida, and other U.S. states.
From 1997 to 2003, Respondent had over $200,000 in expenses and made nearly $4.8 million in revenue.
Additionally, Respondent has not proven that the term “telcan” is descriptive and is connected with prepaid calling card services.
Respondent has no rights or legitimate interests in the disputed domain name as it offers services which compete with Complainant’s business. Further, Respondent offers the name to sale to Complainant, with knowledge that the offer came from Complainant.
Respondent’s claim that it did not know that Complainant was the one requesting to purchase the domain name in 2007 is false, as Respondent replied to Complainant’s offer to an “@telcan.net.” Further, Respondent uses the disputed domain name to offer competing services. Additionally, Respondent provided false contact information for numerous years when registering the disputed domain name. Moreover, Respondent did and must have had actual knowledge of Complainant because the two parties were defendants in a lawsuit in August, 2003. Finally, Respondent also knew of Complainant because it attended a tradeshow, which Complainant also attended, in 2003.
Respondent’s doctrine of laches argument is without merit. Further, Respondent’s argument that Complainant engages in reverse domain name hijacking is also without merit.
Respondent contends in its Additional Submission as follows:
Complainant has not established rights in the TELCAN mark. Complainant simply makes unsubstantiated claims and testimony that it has established common law rights in the mark. To establish common law rights, Complainant must demonstrate sales figures, advertising expenditure, and numbers of customers. Complainant fails to do so and only provides alleged evidence under the name “Callture,” which is another company engaging in the same industry, and also owned by Complainant. Finally, Complainant attempts to provide an additional certificate of incorporation to establish the use of a trademark in commerce; however this attempt should be disregarded as irrelevant for this purpose.
Respondent does have rights and legitimate interests in the <telcan.com> domain name, because Complainant had knowledge of Respondent’s use of the disputed domain at least since 2005 and allowed Respondent to continue use and has since become commonly known by the domain name.
Complainant argues that Respondent knew it attempted to sell the disputed domain name to Complainant in 2005 because it sent a reply email to a “@telcan.net” email address. However, Complainant’s argument is flawed because the subject line states “RE:” which implies a reply, rather than “FW:” which would indicate it forwarded the email to a different address. Rather, it appears as though Complainant used a different email address to receive replies, which is a simple process to set up. Therefore, Respondent did not have actual knowledge of Complainant’s company, and constructive knowledge is irrelevant to UDRP proceedings. Complainant also attempts to mischaracterize the facts surrounding the court proceedings from the early 2000’s, which Complainant uses as its main source of evidence that Respondent knew of Complainant prior to the domain name registration. The initial lawsuit was filed against Respondent in Florida, and Complainant was not added to the lawsuit as a co-defendant until 2004 in California, after Respondent obtained the domain name. Further, Complainant asserts that Respondent went to a trade show also attended by Complainant. However, this is simply a false statement, as Respondent did not in fact attend that trade show.
Complainant owns a USPTO trademark registration for its TELCAN mark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the TELCAN mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the website addressed by the at issue domain name to host its telephone card business.
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.
The majority of the Panel finds as follows; panelist David S. Safran dissents.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the TELCAN mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Additionally and although not necessary for finding Complainant’s rights under paragraph 4(a)(i) but of critical significance to the Panel’s analysis under paragraphs 4(a)(ii) and 4(a)(iii), Complainant presents sufficient evidence to find it is more likely than not that Complainant had common law rights in the TELCAN mark at the time of, or before, Respondent registered the at-issue domain name. Complainant makes assertions and provides documents to show the TELCAN mark’s use in commerce for the period of 1997-2003 and offers sufficient evidence of factors indicating that the TELCAN mark had acquired secondary meaning, prior to 2003. See AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”); See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”).
Further, Respondent’s <telcan.com> domain name is identical to Complainant’s TELCAN trademark. Respondent’s at-issue domain name contains Complainant’s entire TELCAN trademark followed by the top-level domain name “.com”. It is generally recognized that adding a gTLD such as “.com” is irrelevant to a panel’s determination of whether or not a domain name is identical or confusing similar to a trademark. Moreover, Respondent does not dispute that its <telcan.com> domain name is confusingly similar or identical to Complainant’s trademark. Therefore, the Panel holds that the <telcan.com> domain name is identical to Complainant’s TELCAN trademark under Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
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 (Forum Aug. 18, 2006). Here, 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 at-issue domain name.
First, Respondent did not appear to be commonly known by the domain name at the time the domain name was registered. The at-issue domain name was registered first by Respondent’s employee, acting for Respondent, in 2003. The domain name was held in his name until it was transferred to Respondent in 2005. The domain name’s WHOIS record first indicated the name of Respondent’s employee “James Little” as the registrant. After the employee transferred the domain name to Respondent, the WHOIS record specified “Amar Behura / Interactive Media Technologies” as registrant. The WHOIS record thus does not indicate that Respondent was known by the domain name at the time it was registered. That Respondent claims, and it may be so, that Respondent subsequently became known by the domain name is of no consequence to the Panel’s analysis since a respondent must be known prior to registration to show rights or interests under Policy ¶ 4(c)(ii). See Compa de Radiocomunicaciones Mviles S.A. and BellSouth Corporation v. Juan Bolinhas d/b/a "MOVICOM BELLSOUTH, WIPO Case No. D2000-0915 (October 5, 2000) (“In order to adequately construe Paragraph 4(c)(ii), to be "commonly known" cannot but mean that the person or entity in whose name the domain name is registered was effectively known by third parties by the domain name before the moment of registration.”) Therefore, the Panel finds that Respondent is not commonly known by the at issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Additionally, since Respondent uses its trademark-laden domain name to market services which directly compete with those offered by Complainant such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(i) and (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Given the forgoing Complainant’s prima facie showing that Respondent lacks right and interests in respect of the domain name withstands Respondent’s evidence and argument to the contrary. Complainant thus meets its burden regarding Policy ¶ 4(a)(ii).
Respondent registered and used the at-issue domain name in bad faith. As discussed below Policy ¶ 4(b) circumstance, as well as other circumstances, are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent asserts that in 2003 it instructed an employee to search for a domain name to be used to target Canadians seeking online communication services. Respondent’s employee limited his search to “.com” domain names, “.CA” domain names, which bear the Canadian registry country code, were apparently not considered. Respondent’s directed search culminated in selecting the <telcan.com> domain name. Respondent’s employee then registered <telcan.com> for the benefit of Respondent. Although Respondent explains that it was looking to acquire a domain name to target Canadian consumers, it fails to offer any clue as to why a Florida company would want to target Canadians over any other demographic and why it would not even consider a “.CA” country code for such purpose. Moreover, there is nothing on the <telcan.com> website that corroborates Respondent’s claimed purpose for registering the at-issue domain name. Indeed, the current <telcan.com> website seems to be directed to those desiring low calling rates to India, be they American, Canadian or otherwise. On the other hand, prior to and after Respondent acquired and first used the at issue domain name Complainant was already an ongoing Canada based business with common law trademark rights in TELCAN operating its business online at <telecan.net>.
Given the foregoing, it challenges reason to believe that Respondent was blind to Complainant’s online operation at the time it registered <telcan.com>. To believe so one would have to accept that although:
· Respondent was in the same narrow business area as Complainant;
· Respondent admittedly was intent on targeting Canadian consumers; and
· Respondent made a thoughtful effort to find a suitable domain name for its business needs but nevertheless after such effort selected and registered a domain name identical, but for its top level, to the domain name Complainant had been actively using in support of its own ongoing online business
that Respondent was nevertheless unaware of Complainant. Therefore, it is more probable than not that Respondent was aware of Complainant and its TELCAN mark at the time <telcan.com> was first acquired and used by Respondent and thereafter.
It then follows that as between Respondent’s claim that it registered <telcan.com> because it was looking to acquire a domain name to target Canadian consumers and Respondent simply wanting to benefit from any goodwill the trademark identical domain name may have garnered from Complainant’s TELECAN mark, the latter is a more credible and likely motivator. Respondent’s registration and use of the <telcan.com> domain name was thus designed to capitalize on Complainant’s goodwill. This finding demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Bank of America, National Association v. Marcos Alexis Nelson, FA1505001621654 (Forum July 2, 2015) (findings that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where it used the domain name to promote its business in real estate and financial services, which were services that competed with the services the complainant offered); see also, Charles Jourdan Holding AG v.AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.”).
Additionally, Respondent offered to sell the at issue domain name to Complainant for the sum of $50,000. While there is some contention as to whether or not Respondent believed that its offer to sell was being made to Complainant or to a third party, Respondent’s offer at least suggests bad faith pursuant to Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Finally as the Panel discusses above, it is more likely than not that Respondent registered the <telcan.com> domain name knowing that Complainant had trademark rights in the TELCAN trademark. Respondent’s prior knowledge is evident from Respondent’s admission that Respondent, via its employee, made a formal effort to find a suitable business domain name and then selected <telcan.com>, a domain name identical to Complainant’s trademark and near identical to Complainant’s active online business domain name, <telcan.net>. Under the circumstances it is inconceivable that Respondent would not have known of Complainant and its business at the time it registered the <telcan.com> domain name. It is thus clear that Respondent registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark, in itself, further indicates that Respondent registered and used the <telcan.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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").
Respondent’s Claim of Laches
Respondent claims that the doctrine of laches bars Complaint from prevailing since Complainant could have brought a UDRP action at least as early as 2005 when it first learned of Respondent but instead waited approximately 12 years before proceeding with the instant action. However, the equitable doctrine of laches does not lend itself to UDRP proceedings. In arguing that laches should apply Respondent admits that UDRP panels have held that laches is not a defense. The Panel agrees with those panels. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
But even if the Panel were to apply the doctrine of laches to the instant dispute, the doctrine, inter alia, requires that its proponent show that it has been prejudiced by the adverse party’s delay. Respondent argues that since Complainant’s delay will cause financial harm to Respondent if Complainant here prevails, such is reason to find laches appropriate to bar Complainant’s UDRP claim entirely. However, after registering the <telcan.com> domain name in bad faith Respondent used the domain name unchecked for many years to trade on Complainant’s TELCAN mark. Rather than being prejudiced, Respondent likely benefited from the goodwill associated with Complainant’s TELCAN mark. Additionally, there is no indication of any specific prejudice to Respondent’s ability to present evidence and defend against the claims made by Complainant caused by the delay. Therefore, even if the Panel were to consider Respondent’s laches defense, the doctrine would likely be ineffective under the circumstances at bar.
I disagree with the majority decision which, in my opinion, relies too heavily on circumstantial evidence to presume bad faith knowledge. In my view, Complainant has failed to establish bad faith. The two parties have operated their respective businesses side-by-side for at least ten years without Complainant finding any reason to take the action now sought. While laches may not be available as a basis to decide against Complainant in these proceedings, the same inaction that might lead to a finding of laches in a court action demonstrates to this panelist that Respondent acquired the domain purely for business purposes without any bad faith intent. I can find no reason why Complainant would have waited so long to take action if Respondent was acting in bad faith and in a way prejudicial to Complainant, and Complainant has provided no extenuating explanation for inaction, if Respondent truly was acting in bad faith as asserted. Thus, to this panelist, the inescapable conclusion is that bad faith acquisition of the domain sought to be transferred has not been established by Complainant. The burden is on Complainant to prove bad faith acquisition and use of the domain by Respondent, not for Respondent to prove the opposite. Having concluded that Complainant has not met its burden, I have voted to deny transfer of the domain.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Respondent’s request for finding of Reverse Domain Name Hijacking is moot.
Accordingly, it is Ordered that the <telcan.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco (Chair)
Dawn Osborne, David S. Safran (dissenting)
Panelists
Dated: May 24, 2017
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