T-Mobile USA, Inc. v. utahhealth
Claim Number: FA0605000697821
Complainant is T-Mobile USA, Inc. (“Complainant”), represented by Shannon M. Jost, of Stokes Lawrence, P.S., 800 Fifth Avenue, Suite 4000, Seattle, WA 98104-3179. Respondent is utahhealth (“Respondent”), 114 E. 7200 S., Midvale, UT 84047.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sidekickthree.com>, registered with Go Daddy Software, Inc.
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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 1, 2006.
On May 1, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <sidekickthree.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 22, 2006 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on May 22, 2006.
Complainant filed a timely Additional Submission on May 26, 2006. Thereafter, on May 31, 2006, Respondent filed a timely Additional Submission.
On May 25, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant T-Mobile USA, Inc. is one of the four largest providers of wireless voice and data communication in the U.S. It currently serves over 20 million customers nationwide.
Complainant contends that it has used the mark SIDEKICK in commerce since October 2002 to identify its popular SIDEKICK and SIDEKICK II multifunctional wireless telecommunications devices. These devices provide users with wireless access to Web browsing, e-mail, instant messaging, digital photography and other applications, in addition to wireless telephone services.
Complainant owns six (6) U.S. trademark registrations for the mark SIDEKICK, as used on computer programs and in connection with telecommunication services. See Appendix F to Complaint. The mark appears prominently in Complainant’s advertising, including TV and radio commercials, newspaper advertising, promotional posters, product packaging, brochures, and other customer materials. See Appendix D to Complaint. As a result, Complainant contends, the SIDEKICK mark has become closely associated by the consuming public with the products and services offered by Complainant.
Complainant also owns and uses the domain name <sidekick.com> to direct Internet traffic to special content specific to the SIDEKICK devices.
Complainant first became aware of the registration and use of <sidekickthree.com> on or about February 8, 2005. See Appendix K to Complaint. The domain name was originally configured to direct internet traffic to <a1wireless.com>, a commercial internet retailer engaged in the sale of Alltel, Sprint, Nextel, Cingular and Verizon Wireless products and services, all of which compete with Complainant’s products and services. The <a1wireless.com> site is owned by InPhonic, Inc. an authorized T-Mobile USA dealer. The sidekickthree.com site is now used to misdirect Internet traffic to a third-party links page, presumably for the purpose of generating click-through referral or other revenues. See Appendix O to Complaint. Complainant also indicates that the disputed domain name is offered for sale through a link (“Inquire about this domain”) provided on the current <sidekickthree.com> home page, where a prospective buyer can enter a bid to purchase the domain name.
Complainant sent a “cease and desist” email to Respondent on February 8, 2005. In response, Respondent suspended commercial use of the <sidekickthree.com> site; however, commercial use has resumed. Complainant then sent the prior registrant of the disputed domain name, “Domains by Proxy,” a cease and desist letter, both via email (dated January 6, 2006) and mail (dated January 12, 2006). See Appendix L to Complaint. “Domains by Proxy” later contacted the current registrant requesting that it identify itself to Complainant, which it did.
Complainant asserts that the disputed domain name, <sidekickthree.com>, is substantially identical and/or confusingly similar to Complainant’s SIDEKICK mark. It contends that the SIDEKICK mark is the primary, distinctive element of the <sidekickthree.com> domain name and that Respondent added the term “three” in order to capitalize on the substantial consumer interest in Complainant’s line of SIDEKICK devices.
Complainant also argues that Respondent has no rights or legitimate interests in the disputed domain name. Upon information and belief, Complainant maintains that Respondent has never been known by or operated a business under the SIDEKICKTHREE name and has no trademark or service mark rights in that term. Moreover, according to Complainant, Respondent does not have any relationship to Complainant and is not authorized to use the SIDEKICK mark or any variation thereof.
Finally, Complainant contends that the disputed domain name was registered and is being used in bad faith. According to Complainant, Respondent selected, registered and uses the <sidekickthree.com> domain name in bad faith, to capitalize on the substantial goodwill associated with Complainant’s SIDEKICK mark and its growing and popular line of SIDEKICK devices, for financial advantage. This bad faith is evidenced by: (1) the registration of the domain name with prior knowledge of Complainant’s rights in the SIDEKICK mark; (2) the initial configuration of the <sidekickthree.com> domain to misdirect internet traffic to a commercial third party site involving the sale of competing goods and services; (3) the subsequent reconfiguration of the domain name to generate “click-through” or referral fees; (4) the offering of the domain name for sale; and (5) the cloaking of the true ownership by Respondent of the domain name via the “Domains by Proxy” service.
Elaborating, Complainant notes that it launched the original SIDEKICK device in October 2002, then launched SIDEKICK II in September 2004, following a highly publicized promotional event. Upon release of SIDEKICK II, Complainant asserts, it became apparent that it would likely launch successive generations of the SIDEKICK device with numerical designations. Complainant observes that the disputed domain name was registered within four (4) months of the launch of SIDEKICK II.
Respondent argues, in effect, that Complainant has no rights in the term SIDEKICK because it is generic. In support of such assertion, Respondent presented a printout from the USPTO’s Trademark Electronic Search System (TESS) showing a total of 87 marks that include the term SIDEKICK. Respondent also notes that the term “sidekickthree” is not the subject of any pending application or registration in the USPTO.
Respondent contends that it has every right to use the domain name <sidekickthree.com> since no such product exists. It also argues that the domain name was never offered for sale; third parties, instead, were merely invited to inquire about the domain. According to Respondent, it was offered $150,000 for the domain name by someone connected with Complainant and that Respondent indicated, in response, that the name was not for sale but that it would be willing to talk.
Respondent also argues that the domain name was not registered and is not being used in bad faith. It notes that the linked pages advertise a wide range of products and that a sidekickthree product does not exist. Respondent further contends that keeping one’s name private is very important – “it helps keep people from gaining this information and possibly using this information against you most importantly with your email.”
C. Additional Submissions
In its Additional Submission, Complainant contends, among other things, that: (1) Respondent’s argument that the term SIDEKICK is generic is “without merit”; and (2) the evidence establishes that Complainant never offered to purchase the domain name for $150,000 and that such figure was actually proposed by Respondent. Complainant attached to its Additional Submission a host of email correspondence between the parties that allegedly establishes that Respondent registered the disputed domain name with full knowledge of Complainant’s prior trademark rights and, under the guise of settlement discussions, sought to sell the domain name to Complainant at the highest possible price.
Respondent, in its Additional Submission, reiterates its view that the term SIDEKICK is generic as it is “widely used among many people in many forms” and “you will also find the term sidekick in websters (sic) dictionary.” Respondent also contends that it has been in the health, insurance, and marketing business since 1992 and that “our plan for … sidekickthree is to have a kick boxing health video.” Referring to the email correspondence submitted by Complainant in its “Additional Submission,” Respondent asserts that “none of the email states we wanted money” and that “[o]ur whole emphasis during the entire process was about [Complainant] taking on any current trademark issues that it may have.”
Upon review of all the evidence, the Panel concludes that: (1) the domain name in issue, <sidekickthree.com>, is confusingly similar to a mark – SIDEKICK – in which Complainant has rights; (2) Respondent has no rights or legitimate interests in the domain name; and (3) the domain name was registered and is being used in bad faith.
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.
The Panel concludes that the domain name <sidekickthree.com> is confusingly similar to the mark SIDEKICK. The domain name incorporates in full the term SIDEKICK and the addition of the descriptive term “three” and the top-level domain “.com” is of little, if any, trademark significance and, thus, is not sufficient to distinguish the domain name from the term SIDEKICK. A number of ICANN decisions are particularly relevant on this point. See, e.g., Deutsche Telekom AG v. Spiral Matrix, WIPO D2005-1145 (Jan. 2, 2005) (ordering transfer of <tmobilesidekick3.com>); see also Deutsche Telekom AG v. Steven Newman, WIPO D2005-0707 (Sept. 14, 2005) (ordering transfer of <tmobilesidekickii.com> and <tmobilesidekick2.com>).
The Panel further rules that Complainant has rights in the SIDEKICK mark. While Respondent presented evidence that the term SIDEKICK is the subject of many pending trademark applications and registrations in the USPTO, such fact, alone, does not render the term generic. Neither does the fact, as noted by Respondent, that the term “sidekick” is commonly used to refer to “assistants to heros (sic) in a crime fighting capacity” or that such term is found in the dictionary. The terms “shell” and “apple” are also found in the dictionary but are well-recognized trademarks when used in connection with gasoline and computers, respectively.
It is a basic principle of trademark law that in determining whether a term is generic, the term must be compared with the goods or services on or in connection with which it is used. If the primary significance of the term is to identify the product or service itself, it is generic; if, instead, the term identifies the source of the product or service, it may be protectable as a mark. Respondent has presented no evidence that the primary significance of the term SIDEKICK is to identify the common name of any of the products or services offered by Complainant, as opposed to identifying source.
The Panel also notes that Complainant owns a number of U.S. registrations for the SIDEKICK mark and that such registrations create a presumption that the mark is valid, i.e., is not generic. Moreover, a long line of ICANN decisions has held that ownership of a trademark registration satisfies the threshold requirement that a complainant has rights in the mark in issue. See Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO D2000-0503 (July 18, 2000); see also U.S. Office of Pers. Mgmt v. MS Tech. Inc., FA198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”)
The Panel finds that Respondent does not have rights or legitimate interests in the domain name. There is no evidence that Respondent is commonly known by the domain name or that it is using the domain name for noncommercial purposes.
Further, the evidence does not indicate that Respondent is using the domain name in connection with a bona fide offering of goods or services. Rather, the evidence indicates that Respondent is currently using the domain name to misdirect internet users to third party commercial web sites and that Respondent has used the name to redirect consumers to a site at which products and services competitive with those offered by Complainant are available for purchase. Such uses of a domain name have been found by other ICANN panels to fall outside the boundaries of a “bona fide” offering. See, e.g., TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent’s diversionary use of complainant’s marks to send internet users to a site which displayed a series of links, some of which linked to complainant’s competitors, was not a bona fide offering of goods or services); see also WeddingChannel.com Inc. v. Vasilev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that respondent’s use of disputed domain name to redirect internet users to web sites unrelated to complainant’s mark, sites where respondent presumably receives a referral fee for each misdirected user, was not a bona fide offering of goods or services.)
Nor does the evidence establish that Respondent has engaged in “demonstrable” preparations to use the domain name, within the meaning of paragraph 4(c)(i) of the Policy. While Respondent alludes in its Additional Submission to its plan to use the domain name in connection with a kick-boxing health video, no evidence has been presented of any “demonstrable” preparations in this regard. Bald allegations of one’s intentions are not sufficient.
The Panel concludes that the domain name in issue was registered and is being used in bad faith. The evidence establishes that the disputed domain name was registered within months after Complainant’s launch of its SIDEKICK II product and the Panel determines that it is more likely than not that Respondent registered the domain name in anticipation of the launch of a SIDEKICK III product. It is well established that a domain name is registered in bad faith where a respondent registers the name with knowledge of complainant’s rights in marks incorporated into that name. See Amazon.com, Inc. v. Applied Business Solutions, WIPO D2003-0309 (July 2, 2003); see also Deutsche Telecom AG v. Steven Newman, WIPO D2005-0707 (Sept. 14, 2005) (respondent found to have had knowledge of T-MOBILE SIDEKICK mark because such mark held “a great reputation” and SIDEKICK device had become “a pop culture icon as a `must have’ for athletes, celebrities and musicians.”). The panelist in the T-MOBILE SIDEKICK case found that prior knowledge of the mark could be presumed because respondent in that case, like the Respondent here, registered the disputed domain names – <tmobilesidekickii.com> and <tmobilesidekick2.com>—soon after the SIDEKICK II device was launched.
The Panel also concludes that Respondent’s efforts to hide its true identity through the use of a “proxy” domain registrar are evidence of bad faith registration. See Dr. Ing. H.C. F. Porsche AG v. Sabatino Andreoni, WIPO D2003-0224 (May 12, 2003).
Registration and use of a domain name incorporating a complainant’s mark in order to obtain click-through, referral or other revenue has also been found to constitute evidence of the requisite bad faith. See Symark International Inc. v. Gary McCurty, WIPO D2005-0235 (June 15, 2005) (use of domain name in dispute for click-through revenue establishes bad faith). Bad faith is also evident where, as here, the respondent uses, for purposes of commercial gain, a domain name to direct internet traffic to a general commercial links page, where the links further direct traffic to commercial sites. See Deutsche Telecom AG v. Spiral Matrix, WIPO D2005-1145 (Jan. 2, 2005) (registration and use of <tmobilesidekick3.com> name to direct internet traffic to list of sponsored links, thereby allowing respondent to make commercial gain, constitutes bad faith).
It is also clear to the Panel that Respondent actions fall within paragraph 4(b)(iv) of the Policy insofar as Respondent, through its use of the domain name <sidekickthree.com>, is intentionally attempting to attract, for commercial gain, internet users to its site and certain linked sites by creating a likelihood of confusion with Complainant’s mark as to the source of such sites or of the products or services offered therein.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sidekickthree.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: June 7, 2006
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National Arbitration Forum
 According to the Complaint, at the time the Complaint was originally filed with the National Arbitration Forum on April 28, 2006, “Domains by Proxy, Inc.” was the registrant of the disputed domain name. After the registrar, Go Daddy Software, Inc., was notified of the Complaint, the name of the registrant of the domain name was changed to “utahhealth.” Complainant maintains that “Domains by Proxy” is a recognized “sister company” of Go Daddy Software, Inc. and acts as a privacy shield for the actual registrant. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc. and Sabatino Andreoni, WIPO D2003-0230 (May 16, 2003).
 A printout from the WHOIS database indicates that the domain name <sidekickthree.com> was registered on January 20, 2005. See Appendix B to Complaint.
 Some of these marks, e.g.., T-MOBILE SIDEKICK, apparently are owned by Complainant.
 See 15 U.S.C. §1057(b).
 The Panel has reviewed the exhibits attached to Complainant’s Additional Submission offered in support of the contention that Respondent was soliciting a bid for the disputed domain name, as well as the arguments advanced by the parties on this issue in their respective submissions. Suffice it to say that the evidence on this issue is ambiguous at best. As a result, the Panel declines to base its finding of “bad faith” registration and use on Complainant’s contention that Respondent openly attempted to sell the domain name or otherwise solicited bids for the name.