Reliance Communications, Inc. v. Prepaid
Telecom Headquarters
Claim
Number: FA0506000503045
Complainant is Reliance Communications, Inc. (“Complainant”),
represented by William G. Pecau, of Steptoe & Johnson LLP,
1330 Connecticut Ave. NW, Washington, DC 20036. Respondent is Prepaid
Telecom Headquarters (“Respondent”), Prepaid Telecom Hq, Prepaid Telecom,
OK 75124.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <relianceindiaphonecard.com>, registered
with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 27, 2005.
On
June 23, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the National Arbitration Forum that the domain name <relianceindiaphonecard.com>
is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent
is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a
Directnic.com has verified that Respondent is bound by the Intercosmos Media
Group, Inc. d/b/a Directnic.com 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
July 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 26, 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@relianceindiaphonecard.com 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
August 1, 2005, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <relianceindiaphonecard.com>
domain name is confusingly similar to Complainant’s RELIANCE mark.
2. Respondent does not have any rights or
legitimate interests in the <relianceindiaphonecard.com> domain
name.
3. Respondent registered and used the <relianceindiaphonecard.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Reliance Communications, Inc., is a United States affiliate of Reliance
Industries Ltd., India’s largest public company. Complainant provides high quality international virtual calling
card services from the United States to India.
Through Complainant’s <relianceindiacall.com> domain name,
subscribers are assigned a personal identification number, which allows the
subscribers to place international calls to India at a lower rate than is
available through the standard United States telephone service companies.
In association
with these services, Complainant has registered the RELIANCE mark (Reg. No.
2,973,405 issued April 5, 2005, filed December 4, 2003) with the United States
Patent and Trademark Office (“USPTO”).
Respondent
registered the <relianceindiaphonecard.com> domain name on August
28, 2004. Respondent’s domain name
resolves to a website that markets competing international calling card
services.
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.
Complainant has
provided evidence of rights in the RELIANCE mark through registration with the
USPTO. Although Complainant's USPTO registration
for the RELIANCE mark was issued seven months after Respondent's registration
of the disputed domain name, Complainant's rights in the mark date back to
December 4, 2003, when the trademark application was initially filed.
See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002)
(holding that the effective date of Complainant’s trademark rights date back to
the application’s filing date); see also Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of Complainant's federal
rights is . . . the filing date of its issued registration.”). Therefore,
Complainant has established prima facie evidence of rights in its
mark. The burden then shifts onto
Respondent to refute this presumption.
In light of Respondent’s failure to set forth evidence suggesting
otherwise, the Panel finds that Complainant has established rights in the
RELIANCE mark pursuant to Policy 4(a)(i).
See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); see
also 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 [or] have acquired secondary meaning.”).
Complainant
argues that Respondent’s <relianceindiaphonecard.com> domain name
is confusingly similar to Complainant’s RELIANCE mark. The disputed domain name incorporates
Complainant’s entire RELIANCE mark while adding the generic geographic term
“India” as well as the generic terms “phone” and “card” that describe the
business in which Complainant engages.
Panels have held that the addition of geographic terms does not properly
distinguish domain names from registered trademarks pursuant to Policy ¶ 4(a)(i). See VeriSign, Inc. v. Tandon, D2000-1216
(WIPO Nov. 16, 2000) (finding confusing similarity between the complainant’s
VERISIGN mark and the <verisignindia.com> and <verisignindia.net>
domain names where the respondent added the word “India” to the complainant’s
mark); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000)
(finding that the domain name <cmgiasia.com> is confusingly similar to
the complainant’s CMGI mark). Moreover,
Panels have also held that the addition of generic terms that relate to the
business in which a complainant engages fails to differentiate domain names
from trademarks pursuant to Policy ¶ 4(a)(i).
See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb.
Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to the complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which the
complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity); see also Christie’s Inc. v. Tiffany’s Jewelry
Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain
name <christiesauction.com> is
confusingly similar to the complainant's mark since it merely adds the word
“auction” used in its generic sense).
Therefore, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the <relianceindiaphonecard.com>
domain name. Complainant’s assertion
constitutes a prima facie case under Policy ¶ 4(a)(ii), shifting the
burden onto Respondent to prove that rights or legitimate interests exist. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”). Because
Respondent failed to submit a response, the Panel interprets this as evidence
that Respondent lacks rights or legitimate interests pursuant to Policy ¶
4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Geocities v. Geociites.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 is
using the confusingly similar <relianceindiaphonecard.com> domain
name to operate a website that provides international phone card services for
sale. Such use is in direct competition
with Complainant’s business and is neither a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s 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 Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use).
Finally, nothing
in the record indicates Respondent is either commonly known by the disputed domain
name or authorized to register domain names featuring Complainant’s RELIANCE
mark. The relevant WHOIS information
lists Respondent as “Prepaid Telecom Headquarters” and no further evidence has
been submitted to show otherwise.
Therefore, the Panel finds that Respondent has failed to establish
rights or legitimate interests in the <relianceindiaphonecard.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the confusingly similar <relianceindiaphonecard.com> domain
name to directly compete with Complainant’s business by selling international
phone cards through its website. The
Panel finds such use constitutes disruption, which is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Gen. Media
Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001)
(finding bad faith where a competitor of the complainant registered and used a
domain name confusingly similar to the complainant’s PENTHOUSE mark to host a
pornographic web site); see also 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).
Moreover,
Respondent uses the confusingly similar <relianceindiaphonecard.com>
domain name to divert Internet users to a website where it provides similar
services as those associated with Complainant and its mark. Such practice may lead Internet users to
believe that Complainant is affiliated or associated with the resulting
website. Respondent’s commercial use of
the disputed domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark); see also Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding
that the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name pursuant to Policy 4(b)(iv)).
Finally,
Respondent registered the <relianceindiaphonecard.com> domain name
with constructive or actual knowledge of Complainant’s rights in the RELIANCE
mark. Because Complainant has a USPTO
registered trademark, Respondent is said to have constructive knowledge of
Complainant’s rights in the RELIANCE mark.
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 Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a
Principal Register registration [of a trademark or service mark] is
constructive notice of a claim of ownership so as to eliminate any defense of
good faith adoption” pursuant to 15 U.S.C. § 1072). Furthermore, due to the obvious similarity between the
information contained on Respondent’s website and Complainant’s business, the
Panel infers that Respondent has actual knowledge of Complainant’s trademark rights. Registration of a domain name with
constructive or actual knowledge of another’s rights is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO
Apr. 24, 2002) (finding that because the link between the complainant’s mark
and the content advertised on the respondent’s website was obvious, the
respondent “must have known about the Complainant’s mark when it registered the
subject domain name”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat.
Arb. Forum Oct. 24, 2002) (“There is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <relianceindiaphonecard.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 12, 2005
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