Cingular Wireless II, LLC v. Ali Aziz
Claim Number: FA0701000892865
Complainant is Cingular Wireless II, LLC (“Complainant”), represented by Shannon
M. Jost of Stokes Lawrence, P.S., 800 Fifth
Avenue, Suite 4000, Seattle, WA, 98104.
Respondent is Ali Aziz (“Respondent”), 2
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <cingualar.com>, <cingurlar.com>, <ciingular.com>, <cinglular.com> and <cungular.com>, registered with Dstr Acquisition Vii, Llc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 18, 2007; the National Arbitration Forum received a hard copy of the Complaint January 22, 2007.
On January 24, 2007, Dstr Acquisition Vii, Llc confirmed by e-mail to the National Arbitration Forum that the <cingualar.com>, <cingurlar.com>, <ciingular.com>, <cinglular.com>, and <cungular.com> domain names are registered with Dstr Acquisition Vii, Llc and that Respondent is the current registrant of the names. Dstr Acquisition Vii, Llc verified that Respondent is bound by the Dstr Acquisition Vii, Llc registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 15, 2007, 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@cingualar.com, postmaster@cingurlar.com, postmaster@ciingular.com, postmaster@cinglular.com, and postmaster@cungular.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <cingualar.com>, <cingurlar.com>, <ciingular.com>, <cinglular.com>, and <cungular.com>, are confusingly similar to Complainant’s CINGULAR mark.
2. Respondent has no rights to or legitimate interests in the <cingualar.com>, <cingurlar.com>, <ciingular.com>, <cinglular.com>, and <cungular.com> domain names.
3. Respondent registered and used the <cingualar.com>, <cingurlar.com>, <ciingular.com>, <cinglular.com>, and <cungular.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cingular Wireless
II, LLC., is the largest wireless carrier in the
Respondent registered the <cingualar.com> and <cungular.com> domain names April 17, 2002, the <cingurlar.com> and <cinglular.com> domain names May 8, 2002, and the <ciingular.com> domain name May 24, 2002. Respondent is using the disputed domain names to display directories of links to third-party websites that offer goods and services in competition with Complainant.
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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds that Complainant’s trademark registration of the CINGULAR mark with the USPTO sufficiently establishes Complainant’s rights in the CINGULAR mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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.").
Although Respondent’s registration of the <cingualar.com>, <cingurlar.com>, <ciingular.com>, <cinglular.com>, and <cungular.com> domain names predate Complainant’s USPTO registration, Complainant’s filing date of September 8, 2000, predates Respondent’s registration. Therefore, the Panel finds that Complainant’s rights in the mark predate Respondent’s registration of the domain names in dispute. 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 Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Because each of the disputed domain names is a slight misspelling of Complainant’s CINGULAR mark, the disputed domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Respondent failed to sufficiently distinguish the domain names from Complainant’s mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety, although in misspelled form, in the domain names that Respondent registered. Complainant contends that Respondent lacks such rights to or legitimate interests in the <cingualar.com>, <cingurlar.com>, <ciingular.com>, <cinglular.com>, and <cungular.com> domain names, and thus Complainant made a prima facie showing. Because Complainant has made a prima facie case in support of its allegations, the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Because Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have such rights to or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that
Respondent is not authorized to use Complainant’s CINGULAR mark or any
variations of the mark. Review of Respondent’s WHOIS
information does not suggest, nor does any additional information in the record
suggest, that Respondent is commonly known by the <cingualar.com>, <cingurlar.com>, <ciingular.com>,
<cinglular.com>, and <cungular.com> domain
names. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain names under 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.”).
Respondent is using the <cingualar.com>, <cingurlar.com>,
<ciingular.com>, <cinglular.com>, and <cungular.com>
domain names, which
are confusingly similar to Complainant’s mark, to redirect Internet users seeking Complainant’s
products and services to other websites, which offer competing products and
services. Therefore, the Panel
finds that Respondent is not using the <cingualar.com>, <cingurlar.com>,
<ciingular.com>, <cinglular.com>, and <cungular.com>
domain names in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), and is not making a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that
Respondent acted in bad faith in registering and using domain names that
contain in their entirety misspellings of Complainant’s protected mark. Respondent is using the <cingualar.com>, <cingurlar.com>,
<ciingular.com>, <cinglular.com>, and <cungular.com>
domain names, which take
advantage of Internet user mistakes, to divert Internet users seeking Complainant’s
products and services under the CINGULAR mark to other websites, many of which offer products and
services that compete with Complainant’s products and services. Respondent presumably receives
click-through profits from this diversion scheme and is, therefore, taking
commercial advantage of the confusing similarity between the disputed domain
names and Complainant’s mark. Such use
of the disputed domain names constitutes bad faith registration and use under
Policy ¶ 4(b)(iv).
See 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,
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to third-party
websites that offered services similar to the complainant’s services and merely
took advantage of Internet user mistakes).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cingualar.com>, <cingurlar.com>, <ciingular.com>, <cinglular.com>, and <cungular.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 7, 2007.
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