national arbitration forum

 

DECISION

 

Nortel Networks Limited v. Dimitar Dimitrov d/b/a ICDSoft.com

Claim Number:  FA0411000360565

 

PARTIES

Complainant is Nortel Networks Limited (“Complainant”), represented by Lisa Peller London, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is Dimitar Dimitrov d/b/a ICDSoft.com (“Respondent”), 39-41 Tzvetna Gradina St., Sofia, BG 1421, BULGARIA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nortelusa.com> and <nortelusa.net>, registered with eNom.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2004.

 

On November 2, 2004, eNom confirmed by e-mail to the National Arbitration Forum that the domain names <nortelusa.com> and <nortelusa.net> are registered with eNom and that Respondent is the current registrant of the names. eNom has verified that Respondent is bound by the eNom 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 November 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@nortelusa.com, and postmaster@nortelusa.net by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 6, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <nortelusa.com> and <nortelusa.net> domain names are confusingly similar to Complainant’s NORTEL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <nortelusa.com> and <nortelusa.net> domain names.

 

3.      Respondent registered and used the <nortelusa.com> and <nortelusa.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Nortel Networks Limited, is a Canadian corporation that has provided telephony, data, wireless and wireline products and solutions for consumers under the NORTEL mark since the mid-to-late 1980s, and currently employs approximately 70,000 employees worldwide. Complainant first filed a trademark application for the NORTEL mark in Canada in 1975, and since that time has obtained several additional registrations for the mark, including with the United States Patent and Trademark Office (“USPTO”) (e.g. U.S. Reg. No. 2,001,714, issued September 17, 1996). Complainant has also registered its NORTEL mark as a design mark with the USPTO (U.S. Reg. No. 2,184,321, issued August 25, 1998), which consists of the word NORTEL with a stylized, astrolabe design representing the letter “o” in Complainant’s mark. Complainant additionally uses the NORTEL mark online at the <nortelnetworks.com> domain name, which provides information about its various goods and services.

 

Respondent registered the <nortelusa.com> and <nortelusa.net> domain names in August 2002.  Respondent is the hosting company for Protech, an unauthorized reseller of Complainant’s products that claims to sell new and refurbished NORTEL goods.  Respondent uses the disputed domain names to direct Internet users to Protech’s commercial website that sells telecommunications goods apparently manufactured by Complainant.

 

DISCUSSION

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."

 

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.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established that it has rights in the NORTEL mark through registration with the USPTO and through continuous use of its mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

 

Respondent’s <nortelusa.com> and <nortelusa.net> domain names are confusingly similar to Complainant’s mark.  Respondent added the abbreviation “usa” to Complainant’s entire NORTEL mark.  The abbreviation “usa” is likely to be understood by consumers as a geographic identifier for the United States of America.  The Panel reasonably infers that Internet users may believe that the websites located at the <nortelusa.com> and <nortelusa.net> domain names are run by American branches or affiliates of Complainant.  Thus, Respondent’s addition of the abbreviation “usa” to Complainant’s mark does not materially change the impression of the domain names.  Consequently, the Panel finds that the geographic identifier “usa” does not significantly distinguish Respondent’s domain names from Complainant’s mark under Policy ¶ 4(a)(i).  See Sunkist Growers, Inc. v. S G, D2001-0432 (WIPO May 22, 2001) (finding that the domain names <sunkistgrowers.org>, <sunkistgrowers.net> and <sunkistasia.com> are confusingly similar to Complainant’s registered SUNKIST mark and identical to Complainant’s common law SUNKIST GROWERS mark); see also InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) (finding that “Respondent's addition of the letters ‘uk’ to Complainant's mark does not materially change the impression of the domain name” and is confusingly similar to the mark under the Policy).

 

Additionally, Respondent’s <nortelusa.com> and <nortelusa.net> domain names are confusingly similar to Complainant’s NORTEL mark because the mere addition of generic top-level domains does not negate the confusing similarity between Respondent’s domain names and Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant's registered trademark GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

 

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

 

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain names.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

 

Additionally, Respondent uses the disputed domain names to redirect Internet users to a website that purports to sell new and used products manufactured by Complainant.  Respondent’s use of domain names confusingly similar to Complainant’s registered mark to divert Internet users to a website that sells Complainant’s products is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by registering domain names confusingly similar to Complainant’s mark and using them to direct Internet users to a competing website that sells Complainant’s products.  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant); see also Nokia Corp. v. Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent, a cellular phone dealer, to Complainant).

 

By using the disputed domain names to direct Internet users to a website that competes with Complainant’s business, Respondent has registered and used the domain names in bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attracting, presumably for commercial gain, Internet users to a third-party website by creating a likelihood of confusion with Complainant’s NORTEL mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <nortelusa.com > and < nortelusa.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  December 20, 2004

 

 

 

 

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