Nextel Communications Inc. v. Richard
Grams a/k/a Watchmego
Claim Number: FA0505000477174
PARTIES
Complainant
is Nextel Communications Inc. ("Complainant"), represented by
Sherri N. Blount, of Morrison & Foerster, 2000 Pennsylvania
Ave., NW, Suite 5500, Washington, DC 20006.
Respondent is Richard Grams a/k/a Watchmego ("Respondent"), 213 Shaffer Ave.,
Bellmawr, NJ 08031.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain names at issue are <nextel411.net> and <nexteldirect.net>,
registered with Wild West Domains, Inc.
PANEL
The
undersigned certifies that they have acted independently and impartially and to
the best of their knowledge have no known conflicts in serving as Panelist in
this proceeding.
Professor
Darryl C. Wilson, Chair, The Honorable Tyrus R. Atkinson, Jr., G. Gervaise
Davis, III, Esq., as Panelists.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 16, 2005.
On
May 16, 2005, Wild West Domains, Inc., confirmed by e‑mail to the
National Arbitration Forum that the domain names <nextel411.net>
and <nexteldirect.net> are registered with Wild West Domains, Inc.
and that the Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that
Respondent is bound by the Wild West Domains, 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
May 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 8, 2005, 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@nextel411.net
and postmaster@nexteldirect.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 Forum transmitted
to the parties a Notification of Respondent Default.
On
June 21, 2005, pursuant to Complainant's request to have the dispute decided by
a three‑member Panel, the National Arbitration Forum appointed Professor
Darryl C. Wilson, Chair, the Honorable Tyrus R. Atkinson, Jr., G. Gervaise
Davis, III, Esq., as Panelists.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 1(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES'
CONTENTIONS
A. Complainant
Complainant,
Nextel Communications Inc., contends that it has used the NEXTEL mark in
commerce since at least as early as 1988 in connection with various wireless
goods and services. Complainant also
indicates that it owns several U.S. Federal Trademark registrations
incorporating the NEXTEL trademark and that it owns numerous domain names
containing the NEXTEL mark, including <nextel.com>. Complainant asserts that its marketing,
promotion and usage of the NEXTEL mark has made the mark famous, distinctive
and representative of extremely valuable goodwill. Complainant states that Respondent has registered the confusingly
similar domain names, <nextel411.net> and <nexteldirect.net>,
to trade off the goodwill associated with its NEXTEL mark and otherwise
improperly derive commercial benefit from Complainant since Respondent has no
legitimate interest or rights in the domains in dispute. Complainant also contends that Respondent's
websites feature links to competing telecommunications service providers. Complainant further asserts that
Respondent's actions are in bad faith since it has had no past affiliation or
is not presently associated with Respondent in any fashion.
B. Respondent
Respondent
did not file an answer to the Complaint.
FINDINGS
Complainant,
Nextel Communications, Inc., is a well-known corporation based in Virginia
engaged in the telecommunications business.
Complainant has used the NEXTEL mark in commerce since at least as early
as 1988 and has procured at least nineteen (19) U.S. Federal Trademark
Registration for the NEXTEL mark (i.e., Reg. No. 1,637,139/Class 38 for
telecommunication services issued March 5, 1991 and variations thereof). Complainant has applied for a number of
additional federal trademark registrations and has more than a dozen pending
applications for marks that incorporate the NEXTEL mark. Complainant has procured the <nextel.com>
domain name along with more than 400 additional domain names incorporating the
NEXTEL mark at the .com, .net, .org, .info, .biz, .us, .bz, .cc and .tv domain
levels. Complainant has actively
policed the use of its mark to prevent unauthorized use of the same through
timely correspondence as well as the extensive filing of administrative
proceedings. Complainant is not
affiliated with Respondent, in any manner nor has Complainant authorized,
licensed, or in any way consented to Respondent's use of its NEXTEL mark.
Respondent
is an individual named Richard Grams who reflects a New Jersey address and who
registered the domain names in dispute, <nextel411.net> and <nexteldirect.net>,
initially with eHosted.net, a registrar that shares the same address as that
reflected for Respondent. Respondent's
domain names are variants of Complainant's mark, both domain names simply add
additional numbers or letters to Complainant's federally registered trademark,
NEXTEL.
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;
(2)
the 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 used the NEXTEL mark since 1988 and has received several United States
registered trademarks for the same including Reg. Nos. 1,637,139 issued March
5, 1991; 1,884,244 issued March 14, 1995 and 2,358,989 issued June 20, 2000. Complainant has also registered several
additional marks incorporating the word NEXTEL. See Am. Online, Inc. v. Thomas P. Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that successful trademark
registration with the United States Patent and Trademark Office creates a
presumption of rights in a mark).
The
Panel finds that Respondent's <nextel411.net> and <nexteldirect.net>
domain names are confusingly similar to Complainant's NEXTEL mark, as the
domain names incorporate the mark entirely and merely add the generic terms
"411" (which is commonly used as synonym for "information")
and "direct." See Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of the complainant combined with a generic word or
term). Respondent's addition of the
generic top-level domain ".net" is also too minor to overcome a
finding of confusing similarity pursuant to Policy ¶4(a)(i). See
Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum May 27, 2003) ("The addition of a top-level
domain is irrelevant when establishing whether or not a mark is identical or
confusingly similar, because top-level domains are a required element of every
domain name.").
Rights or Legitimate Interests
The
Panel finds, pursuant to Policy ¶ 4(a)(ii), that Respondent does not have
any rights or legitimate interests in the disputed domain names. Respondent's failure to answer the Complaint
allows the Panel to accept all reasonable allegations and assertions set forth
by Complainant as true. See Bayerische
Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002)
(finding that in the absence of a response the Panel is free to make inferences
from the very failure to respond and assign greater weight to certain
circumstances than it might otherwise do).
Respondent has thus failed to propose any set of circumstances that
could substantiate its right or legitimate interests in the disputed domain
names. See Geocities v. Geocities
Com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has
no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the Panel with evidence to suggest
otherwise).
Respondent's use of its websites as links to competing
telecommunication service and product providers is not a use in connection with
a bona fide offering of goods and services pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See
Winmark Corp. v. In the Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002)
(finding that the respondent had no rights or legitimate interests in a domain
name that used the complainant's mark to redirect Internet users to a competitor's
website). There is also nothing to
indicate that Respondent is now commonly known, nor has ever been known by the
disputed domain names or has ever been authorized to register domain names
featuring Complainant's NEXTEL mark.
Registration and Use in Bad Faith
The
Panel finds, pursuant to Policy ¶ 4(a)(iii), that Respondent's
registration and use of <nextel411.net> and <nexteldirect.net>
are in bad faith. Respondent registered
the disputed domain names with constructive knowledge of Complainant's rights
in the NEXTEL mark due to Complainant's previously registered United States
trademarks. The obvious connection
between the content on Respondent's websites and Complainant's mark gives rise
to a further inference that Respondent had actual knowledge of Complainant's
rights when Respondent registered the domain names in dispute. See
Orange Glo Int'l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) ("Complainant's OXICLEAN mark is listed on
the Principal Register of the USPTO, a status that confers constructive notice
on those seeking to register or use the mark or any confusingly similar
variation thereof."); see also Pfizer, Inc. v. Suger, D2002-1087
("WIPO Apr. 24, 2002) (finding that because the link between the
complainant's mark and the content advertised on the website was obvious, the
respondent "must have known about Complainant's mark when it registered
the subject domain name").
Use
of the disputed domain names for websites linking viewers to competitors is
also evidence of bad faith registration and use. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18,
2000) (finding the respondent acted in bad faith by attracting Internet users
to a website that competes with the complainant's business). The Panel may infer Respondent earns
click-through fees for diverting Internet users to the competing websites, and
that these commercial gains resulting from the intentional diversion of
business to Respondent's websites is further evidence that the disputed domain
names were registered and used in bad faith.
See Qwest Comm'ns Int'l Inc. v.
Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy & 4(b)(iv).").
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the relief requested shall be GRANTED.
Accordingly,
it is Ordered that the <nextel411.net> and <nexteldirect.net>
domain name be TRANSFERRED from Respondent to Complainant.
Professor Darryl C. Wilson, Chair,
Honorable Tyrus R. Atkinson, Jr.,
G. Gervaise Davis, III, Esq.,
Dated: July 5, 2005
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