National Arbitration Forum

 

DECISION

 

Nextel Communications Inc. v. Jason Geer

Claim Number: FA0505000477183

 

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 Jason Geer (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <nextell.com>, registered with Tlds, Llc d/b/a Srsplus.

 

PANEL

 

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Hon. Tyrus R. Atkinson, Jr., David Sorkin and Hon. Bruce E. Meyerson 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 19, 2005, Tlds, Llc d/b/a Srsplus confirmed by e-mail to the National Arbitration Forum that the domain name <nextell.com> is registered with Tlds, Llc d/b/a Srsplus and that the Respondent is the current registrant of the name.  Tlds, Llc d/b/a Srsplus has verified that Respondent is bound by the Tlds, Llc d/b/a Srsplus 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, 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@nextell.com by e-mail.

 

A timely Response was received and determined to be complete on June 22, 2005.

 

A timely Additional Submission submitted by Complainant was received on June 27, 2005 and a timely Additional Submission was submitted by Respondent on July 5, 2005.

 

On June 29, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Tyrus R. Atkinson, Jr., David Sorkin and the Hon. Bruce E. Meyerson as Panelists.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complainant contends that it has used the “NEXTEL” mark in commerce since 1988 in connection with wireless telephones and wireless telephone accessories and that it owns several U.S. federal trademark registrations and applications, which include the “NEXTEL” mark.  Complainant contends that it has no affiliation with Respondent and that Respondent’s purpose in registering the disputed domain name is to “benefit commercially from the sale of wireless telephone accessories to persons who are intentionally diverted to Respondent’s website after making a mistake when trying to type in Complainant’s nextel.com domain name.”

 

B.     Respondent

 

Respondent contends that he is an authorized reseller of accessories for Nextel phones at his web site, “accessoriesusa.com.”  Respondent contends that he purchased the disputed domain name for the purpose of promoting the sale of Nextel accessories and that nothing on this site creates the likelihood of confusion with Complainant’s mark.  Respondent contends that “[u]sers are simply presented with the opportunity to purchase Complainant’s products from Complainant’s authorized distributors, which ultimately benefits Complainant.”  Respondent contends that he does not promote the sale of phone accessories and wireless plans that compete with Complainant.

 

C.     Additional Submissions

 

In its Additional Submission, Complainant contends that Respondent’s site promotes the goods and services of Complainant’s competitors.  Complainant contends that on Respondent’s web site, accessoriesusa.com, there is a link to LetsTalk.com, which sells wireless phones and calling plans of Complainant’s competitors.  Complainant further states that Respondent is not selling Complainant’s trademarked goods, but rather accessories manufactured by Motorola which work on a variety of Motorola and non-Motorola products.

 

In his Additional Submission, Respondent contends that all of the accessories sold on his site are compatible only with Complainant’s phones; Respondent asserts that he is not promoting the sale of phones and phone plans of Complainant’s competitors.

 

FINDINGS

 

Complainant Nextel Communications Inc. provides wireless telephone services and sells related wireless telephone accessories.  It is the owner of several dozen trademarks and pending applications incorporating the trademark “NEXTEL.”   Respondent’s <nextell.com> domain name incorporates Complainant’s mark in its entirety; Complaint has not authorized Respondent to use its mark.  Respondent’s domain name resolves to another website, “accessoriesusa.com.”  This site, through a link to “LetsTalk.com” offers for sale wireless phone plans and  phone accessories not only of Complainant but also of Complainant’s competitors.   

 

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

 

Respondent has stipulated that his domain name is identical or confusingly similar to Complainant’s mark.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent is using the <nextell.com> domain name to operate a website which directs Internet users to websites that offer products and services that compete directly with Complainant.   Although the record indicates that consumers have the opportunity to purchase Complainant’s products and services from Respondent’s site, Complainant is correct that Internet users who are diverted to Respondent’s site after typing in error “NEXTELL,” are offered products and services of Complainant’s competitors.   Thus, the Panel agrees with Complainant’s assertion that such competing use 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 pursuant to Policy ¶ 4(c)(iii).  E.g., Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (use of the disputed domain name to redirect Internet users to a financial services website which competed with the complainant was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (respondent’s appropriation of the complainant’s mark to market products that compete with the complainant’s goods does not constitute a bona fide offering of goods and services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (respondent had no rights or legitimate interests in a domain name that used complainant’s mark to redirect Internet users to a competitor’s website).

 

This issue is the heart of Respondent’s defense.  Respondent contends that under “numerous other UDRP decisions” a respondent’s “sale of authorized goods or services associated with a disputed domain name establishes” a respondent’s rights and legitimate interests.   But there is an important factual difference between the decisions relied upon by Respondent, and this case.  Here, the disputed domain name resolves to Respondent’s website through which Respondent offers for sale products and services which compete with those of Complainant.  Respondent’s assertion that it is promoting the sale of Complainant’s products “only” is simply not borne out by the record.  The record indicates that through Respondent’s “accessoriesusa.com” website,  to which Internet users are directed when they misspell Complainant’s mark, Respondent promotes the purchase of alternative phone plans and accessories, including three nationally-known competitors of Complainant.  In the cases relied upon by Respondent, no such competition is present.  E.g., K & N Engineering, Inc. v. Kinnor Services, No. D2000-1077 (WIPO Jan. 19, 2001) (respondent was an authorized distributor of complainant’s products and 90% of its sales were of those products); see also Weber-Stephen Products Co. v. Armitage Hardware, No. D2000-0187 (WIPO May 11, 2000)(respondent’s sale of competitors products had been “minor” and respondent agreed to remove those items from its site).

 

The present case is more like those situations in which a respondent, while using a complainant’s mark, marketed to Internet users the products or services of the complainant’s competitors.  E.g., Whirlpool Properties, Inc. v. Ace Appliance Parts & Serv., FA 109386 (May 24, 2002) (respondent had no rights or legitimate interests in the domain name where respondent sold products of 30 of complainant’s competitors)

 

The Panel also agrees with Complainant’s assertion that a reasonable inference from the record is that Respondent registered the <nextell.com> domain name with the intent to confuse Internet users seeking Complainant’s mark.  Accordingly, the Panel finds that Respondent’s use of a domain name confusingly similar to Complainant’s mark to divert Internet users to a website for the purpose of Respondent’s own commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (respondent’s diversionary use of complainant’s marks to send Internet users to a web site which displayed a series of links, some of which linked to competitors of complainant, was not a bona fide offering of goods or services). 

 

Registration and Use in Bad Faith

 

For several reasons, the Panel agrees with Complainant that Respondent registered and used the disputed domain name in bad faith.  First, Respondent’s <nextell.com> domain name epitomizes “typosquatting” in its purest form, because Respondent misspelled Complainant’s well known mark by merely adding the letter “l,” causing Internet users seeking Complainant’s NEXTEL mark to become confused.  See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is . . .  itself evidence of bad faith”).

 

Moreover, Complainant argues that Respondent’s <nextell.com> domain name causes Internet users to mistakenly believe that the disputed domain name is affiliated with Complainant.  The Panel agrees with Complainant that the initial user confusion that the domain name causes is evidence that Respondent registered and used the domain name in bad faith.  See Sony Kabushiki Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”). 

 

 

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 <nextell.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Bruce E. Meyerson, Panel Chair

& Hon. Tyrus R. Atkinson, Jr.
Dated: July 15, 2005

 

 

I respectfully dissent.

 

Respondent uses the disputed domain name to direct Internet users to his website, accessoriesusa.com.  That website is used primarily to sell wireless phone accessories, and secondarily to refer users to another website, LetsTalk.com, which sells wireless phones and calling plans.  The accessories offered for sale at accessoriesusa.com are marketed by Respondent to users of Nextel phones, and nearly all of them work only with Nextel phones.  Respondent clearly is entitled to use the NEXTEL mark in at least some manner to describe and market these products.  Whether this nominative fair use right extends to the use of the mark in a domain name, of course, is an open question.  Compare Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002), with PACCAR Inc. v. TeleScan Technologies, L.L.C., 319 F.3d 243 (6th Cir. 2003), overruled by KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 125 S. Ct. 542 (2004).  A plausible though possibly incorrect interpretation of trademark law is not tantamount to bad faith.  Even if Respondent lacks rights or legitimate interests in the disputed domain name, therefore, I would not find that he registered or used the name in bad faith.  Furthermore, in my view the Panel should not even attempt to resolve issues of this nature.  The Policy was never intended to extend to cases involving legitimate trademark disputes; such disputes are to be relegated to the courts.  See Second Staff Report on Implementation Documents for the Uniform Domain Dispute Resolution Policy (October 24, 1999), <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm/>, ¶ 4.1(c).

 

Respondent’s secondary use of the disputed domain name, to refer users to LetsTalk.com, does not change the matter.  Respondent’s links to the LetsTalk.com website are to pages that offer genuine Nextel phones and Nextel calling plans.  While LetsTalk.com does also offer competing products and services elsewhere on its site, the connection between Respondent’s use of the disputed domain name and those competing offerings is far too attenuated to affect the legitimacy of Respondent’s activity.

 

I would find that Complainant has failed to discharge its burden of proof on the questions of rights or legitimate interests and bad faith registration and use, and would therefore dismiss the complaint.

 

 

David Sorkin

Dated: July 15, 2005