National Arbitration Forum
DECISION
Cricket Communications, Inc.
v. Louise Oliver
Claim Number: FA0704000954005
PARTIES
Complainant is Cricket Communications, Inc. (“Complainant”), represented by Lisa M. Martens,
of Fish & Richardson P.C., 12390
El Camino Real, San Diego, CA 92130. Respondent is Louise Oliver (“Respondent”), represented by Delmus Jeffery,
(“Mr. Jeffery”) PO Box 2689, National City,
CA 91951.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are:
<cricketmanwirelesscommunications.com>, <cricketmobilecommunicationsofficialwebsite.com>,
<cricketmobilecommunictions.com>, <cricketmobiletechnology.com>,
<cricketwirelesscommunications.com>,
<cricketwirelesscommunicationsofficialsite.com>,
<cricketwirelessphonesandservice.com>,
<cricketwirelessphonesandservices.com>,
<cricketwirelesstechnologyofficialwebsite.com>, <cricketwirelesstechnologyonline.com>, <cricketmanofficialwebsite.com>,
and <cwccricketwirelesscommunications.com>.
They are all registered with Go Daddy
Software, Inc. (“Go Daddy”)
and, except where they are identified individually,
they are jointly referred to hereafter as “the disputed domain names.”
PANEL
The undersigned, David H Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on April 4, 2007;
the Forum received a hard copy of the Complaint on April 6, 2007.
On April 5, 2007, Go Daddy confirmed by e-mail to the Forum that
the following domain names were all registered with it –
<cricketmanwirelesscommunications.com>, <cricketmobilecommunicationsofficialwebsite.com>,
<cricketmobilecommunictions.com>, <cricketmobiletechnology.com>,
<cricketwirelesscommunications.com>,
<cricketwirelesscommunicationsofficialsite.com>,
<cricketwirelessphonesandservice.com>,
<cricketwirelessphonesandservices.com>,
<cricketwirelesstechnologyofficialwebsite.com>, <cricketwirelesstechnologyonline.com>, <cricketmanofficialwebsite.com>,
and <cwccricketwirelesscommunications.com>.
Go Daddy also confirmed that Respondent is the current registrant of the names.
Go Daddy has
verified that Respondent is bound by its 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 April 17, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding, setting a deadline
of May 29, 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 the following addresses –
postmaster@cricketmanwirelesscommunications.com, postmaster@cricketmobilecommunicationsofficialwebsite.com, postmaster@cricketmobilecommunictions.com,
postmaster@cricketmobiletechnology.com, postmaster@cricketwirelesscommunications.com,
postmaster@cricketwirelesscommunicationsofficialsite.com, postmaster@cricketwirelessphonesandservice.com,
postmaster@cricketwirelessphonesandservices.com, postmaster@cricketwirelesstechnologyofficialwebsite.com,
postmaster@cricketwirelesstechnologyonline.com, postmaster@cricketmanofficialwebsite.com,
and postmaster@cwccricketwirelesscommunications.com by e-mail.
A hard copy of a Response was received on May 7, 2007, but the Forum
did not receive the Response in electronic format. Therefore, the Response is deficient
according to Supplemental Rule 5(a).
A timely Additional Submission from Complainant was received on May 8,
2007 and the Forum has determined it to be complete pursuant to Rule 7 of its
Supplemental Rules.
On May 11, 2007, the Forum received an Additional Submission from
Respondent and determined it too to be timely and complete pursuant to the said
Supplemental Rule 7.
On May 15, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed David H Tatham as Panelist.
On May 21, 2007, an Order was issued requesting
Respondent to supply a copy on one of the Exhibits that had not been included
in the bundle of Exhibits supplied to the Panel, and the deadline for
submitting the Decision was extended to June 1, 2007.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the operating subsidiary of Leap Wireless International. It is a
telecommunications company providing innovative communications solutions and offering
its customers unlimited “anytime” minutes within its calling area over an
all-digital “code division multiple access” network. It currently offers these services in 51
markets across 20 U.S.
states.
Complainant owns the following three U.S. Federal trademark
registrations for the word CRICKET –
No. 2,359,369 registered on
June 20, 2000 for services in Class 38 claiming first use from March 17, 1999.
No. 2,359,370 registered on
June 20, 2000 for goods in Class 9 claiming first use from March 17, 1999.
No. 2,363,821 registered on
July 4, 2000 for services in Class 35 claiming first use from March 17, 1999.
Complainant also owns the domain name <mycricket.com> which has been used by it,
and by its predecessors in business, since October 1998.
The following is a summary of the factual and legal grounds on which
the Complaint is based –
·
All of
the disputed domain names were originally owned by Delmus Jeffery but they were
transferred by him into the name of Respondent “on the very day Cricket filed
this Complaint against him.” Complainant alleges that this was done in
order to circumvent the UDRP process.
Complainant believes that Respondent is
either a fictional individual or a complicit acquaintance of Mr. Jeffery.
Either way, Respondent is merely a “straw
man” for Mr. Jeffery and not an
innocent third-party purchaser of the domain names.
As proof thereof, Complainant points out
that after the disputed domain names had been transferred to Respondent, Mr. Jeffery sent several communications to
Complainant’s counsel in which he made it clear that he still controlled the
content of the websites at the disputed domain names and that he had the
authority to transfer them if necessary.
·
Mr. Jeffery initially attempted to register as an “affiliate”
under Complainant’s Affiliate Program and agreed to the “Cricket Affiliate
Agreement.” This Agreement explicitly
prohibits the use of URL’s containing CRICKET or any of Complainant’s
other marks, and prohibits the copying of material from Complainant’s website. The said
Program specifically provides that the only rights to Complainant’s trademarks
or copyrighted materials that an Affiliate receives are the right to post on
his website certain banners which are provided by Complainant.
·
However,
contrary to this Agreement, Mr.
Jeffery registered the disputed domain names, all of which contain
Complainant’s trademark CRICKET and they have been used to generate advertising
and click-through revenue. Attached to the Complaint was a copy of the
site at <cricketwirelesscommunications.com> which was taken on March 9, 2007. Complainant
alleges that this contains conspicuous use of its copyrighted material and is
an attempt to pass off the site as a legitimate source for purchasing its
products and services. It contains no disclaimers and displays Complainant’s
CRICKET logo in a prominent position. However,
Complainant acknowledges that this site was subsequently modified to contain
the statement “CWC a Cellular Phone Affiliate Website Store” in small print at
the top. In addition, but after the Complaint had been
filed and after the disputed domain names had been transferred to Respondent,
Mr. Jeffery wrote to say that he had
removed the entire contents of the site.
·
Complainant
avers that while the contents of the site remained as described above, the
public was likely to assume – mistakenly – that the website was in some way
connected to or sponsored by Complainant and further that this might lead to
serious and ongoing damage to Complainant’s business by creating a likelihood
of confusion, mistake, and/or deception.
Complainant was also concerned that Mr. Jeffery and/or Respondent might be engaged in
criminal “phishing” activities, i.e. the fraudulent acquisition of sensitive
information by the creation of a sham commercial site.
·
Complainant
also annexed to the Complaint copies of the contents of the websites at the
other disputed domain names. These, it alleged, contain links to numerous
third-party sites, including those of wireless communications companies that
are competitors of Complainant. Complainant alleges that, as a result, Mr. Jeffery is simply using the names to host
revenue-generating advertisements.
·
Complainant
has repeatedly communicated to Mr.
Jeffery its concerns at his actions described above, and that they were outside
its guidelines for its online marketing affiliates.
However, he has rejected Complainant’s
reasonable offer to purchase the disputed domain names at cost, and he has
harassed Complainant with threats of a baseless lawsuit and even criminal
penalties, and he has threatened legal action for “emotional stress” and “embarrassment
to friends and family.” He has
threatened to go to the press, the police and the American Civil Liberties
Union (“ACLU”). Complainant believes that Mr. Jeffery is under a serious misapprehension of the
relevant intellectual property rights that are at issue, and that he has
indulged in irrational posturing.
·
Respondent’s
claims that he owns the copyright in the disputed names, that they are his own “creative
idea,” and that it is the civil right of anyone to own a domain name that does
not belong to anyone else, is disingenuous and without merit.
Complainant advances the following arguments under the necessary three
elements of the UDRP, all of them backed by reference to numerous decisions,
copies of which were annexed to the Complaint.
Confusingly Similar
Complainant’s three trademark registrations of CRICKET are
incontestable and Complainant alleges that this is conclusive evidence of the
validity of these registrations and of the owner’s exclusive right to use it. But
Complainant also alleges common law rights in the name CRICKET in the U.S.
by virtue of its long and continuous use in connection with various goods and
services in the field of wireless communications.
The disputed domain names all consist of
Complainant’s CRICKET trademark along with non-distinctive terms relating to
the wireless communications industry.
Some even include the misleading and
non-distinctive terms “official website” or “official site” which deceives
users into thinking that they are owned by, or endorsed by, Complainant. Complainant alleges that a domain name consisting
of a trademark, the generic name of a product or service that is sold under
that trademark, and a generic top level domain name has been held to be
confusingly similar.
Complainant thus asserts that the first element of paragraph 4(a)(i) of the UDRP is satisfied.
Rights and Legitimate Interests
Neither Respondent nor Mr.
Jeffery has ever been known or referred to as “cricket.” Indeed, the WHOIS
record for the disputed domain names gives Respondent’s name as “Louise Oliver,”
while prior to that the owner is given as either “Delmus Jeffery” or “Jeffery
Delmus.” If the record does not imply
that they are commonly known by any of the domain names, this suggests that
they are not known by these designations.
Neither Respondent nor Mr.
Jeffery is making a non-commercial or fair use of any of the disputed domain
names. Internet users are attracted to the websites
at the disputed domain names, which are “laden with revenue-generating
advertisements and links” and it has
been held that using a domain name containing another party’s trademark to
operate a portal website that generates advertising and click-through revenue
is not a bona fide offering of goods
or services.
Complainant contends that it is not seeking to suppress all uses of the
word CRICKET in every context, it is only trying to
prevent confusingly similar uses of it in connection with related goods or
services. In bringing this Complaint, Complainant is
seeking the removal of a website whose content is virtually identical to its
own official website and in order to protect against confusion, deception and
the possible criminal “phishing” violations mentioned above.
As noted above, Mr. Jeffery
attempted to join Complainant’s Affiliate Program and, according to him,
registered the domain name <cricketwirelesscommunications.com> in connection therewith. However, he
has been informed repeatedly by Complainant and its counsel that this is in
violation of at least six Sections of the “Cricket Affiliation Agreement.” Accordingly, according to Complainant, this
means it is not being used in connection with a bona fide offering of goods and services, nor is it a legitimate or
fair use.
As noted above, Complainant thought that the <cricketwirelesscommunications.com>
domain name could be used in a fraudulent way, and to deceive customers into
parting with their credit card numbers or other personal information. This, Complainant alleges, is proof that
neither Respondent nor Mr. Jeffery
has any rights or legitimate interests in it.
In Complainant’s view, neither Respondent nor Mr.
Jeffery has legitimate interests in any of the disputed domain names.
Bad Faith
Complainant alleges that Mr.
Jeffery is, through Respondent, using the disputed domain names, comprised as
they are of its CRICKET trademark, for the purpose of providing links to third-party
websites and that this constitutes bad faith.
Users are led to believe that the sites
are affiliated with the CRICKET brand because of the advertisements they
contain and because of the links to various wireless communications services
and products. It is clear to Complainant that the sole
purpose of the websites at the disputed domain names is to display revenue-generating
links to and advertisements for purveyors of wireless communications goods and
services. So, Respondent and Mr. Jeffery have acted and are acting in bad faith by
capitalizing on the likelihood of confusion created by using the CRICKET
trademark.
Rather than accept a reasonable offer to purchase the disputed domain
names at cost, Mr. Jeffery has
engaged in increasingly erratic behaviour.
Complainant alleges that because Respondent and Mr. Jeffery had constructive notice of Complainant’s
trademark CRICKET, and yet proceeded to register the disputed domain names, all
of which contain this mark, this in itself is evidence of bad faith, and
Complainant cites several UDRP decisions that, it alleges, support this
contention.
Finally, Complainant alleges that the circumstances surrounding the
transfer of the disputed domain names from Mr.
Jeffery to Respondent is evidence of bad faith.
The transfer was effected
on the very day that Complainant first filed a Complaint, and the transfer of a
domain after being served with a Complaint is evidence of bad faith. Furthermore, the telephone number given for
Respondent does not function and since Respondent had, at the time the
Complaint was drawn up, only been the recorded owner of the disputed domain
names for 2 weeks, it could hardly be claimed that the number is old or out of
date. This is, according to Complainant,
evidence of bad faith.
B. Respondent
The following is a summary of the facts, allegations and contentions
submitted by Mr. Jeffery on behalf
of Respondent –
·
Complainant
has not provided sufficient factual or legal grounds to prove each and every
one of its allegations and, in its Complaint, has sought to misinform and
mislead.
·
Mr. Jeffery did not believe that he was in violation
of Complainant’s intellectual property rights, but throughout believed that he
was defending his rights to own domain names that he had legally registered. He denies that he ever behaved erratically.
·
Mr. Jeffery received a communication from Converseon,
who is Complainant’s online approval company, saying that his application had “slipped
by our approval process” and both Respondent and Mr.
Jeffery believe that Complainant’s lack of communication with Converseon and
its field representatives has greatly contributed to the misleading
circumstances leading up to the filing of the Complaint.
·
Mr. Jeffery believes that his affiliation with
Complainant had been suspended unfairly, especially as he had followed all of
Converseon’s requirements.
·
Some of
the demands for cancellation made on behalf of Complainant related to domain
names which Respondent does not even own – and which he notes are still listed
as being available. He initially registered a number of domain
names with a view to using one of them, and although he had yet to make a final
decision on which one to use, he had begun to use <cricketwirelesscommunications.com>
and, later, <cwcricketwirelesscommunications.com>.
He believed that he had received written
permission from Converseon to use the first of these and he registered the
second one when Converseon asked him to change the name, and as part of his
attempt to reinstate his affiliate account with Complainant. He had
spent many hours creating, designing, and marketing the website at this domain
name, as well as submitting the name to hundreds of search engines and
informing various music and television industry contacts.
Complainant’s continued harassment of
him caused him emotional distress as well as embarrassment to his friends and
family.
·
Mr. Jeffery took particular exception to the term “through
whatever measures necessary” used in a letter from an attorney acting on behalf
of Complainant, which he considered to be a form of
harassment and extortion and he took advice from the police on this. He also
consulted the ACLU (“American Civil Liberties Union”).
·
Neither
Respondent nor Mr. Jeffery has ever
demanded money from Complainant, but Mr.
Jeffery did inform the representative of Converseon that he considered that his
domain names were more valuable than just the cost of registering them, which
was all that Complainant was offering him.
·
The
domain names which Mr. Jeffery had
not used were “parked” by Go Daddy and their content i.e. advertising links, banners and other visual material, was provided by Go Daddy as part of their
registration agreement with anyone registering a domain name with them.
·
It was
merely a coincidence of timing that the disputed domain names were transferred
at the time Complainant filed its Complaint.
·
Neither Respondent
nor Mr. Jeffery has acted in bad
faith, and indeed assert bad faith on the part of Complainant for their unfair
demands to transfer domain names which he did not own, as well as for breach of
contract, and for the sudden termination of his affiliate agreement without
warning and without consideration of the complications in doing so.
·
Respondent
refers to a number of other domain names which have been registered and which
are being used without, apparently, any objection from Complainant. Some of them use the banners and text links
supplied by Complainant for use by its affiliates.
These include <wirelesscricket.com>,
<wirelesscricket.net>,
<gamecricket.com>, and
<mycricket.us>.
·
On
receipt of the first demand to change his domain name, Mr.
Jeffery registered <cwcricketwirelesscommunications.com> and put the disclaimer “cellular
affiliate website store” on the website.
However, he subsequently discontinued
all use of the website temporarily until the matter was resolved.
·
Mr.
Jeffery alleges that he was misled by Complainant, who first encouraged him and
offered to supply multiple banners and text links as late as March 7, 2007, and
then accused him of trademark infringement while allowing others to do the same
without any harassment or threats.
·
The site
used by Respondent and Mr. Jeffery is
not, as alleged by Complainant, virtually identical to its own, neither in
appearance nor in design.
·
Neither
Respondent nor Mr. Jeffery has ever
attempted to attract users to their websites for commercial gain and they deny
all of Complainant’s allegations in this regard.
·
Mr. Jeffery had a legitimate interest in becoming a bona fide affiliate of Complainant and a bona fide interest in opening several storefront locations for promoting
Complainant’s business. Annexed to the Response was a copy of a letter
from a firm confirming that they had been approached by Mr. Jeffery with this in mind.
·
Respondent
and Mr. Jeffery vehemently refute
Complainant’s allegations that they intended to defraud the public by seeking
to obtain credit card details and personal information from potential customers.
·
Mr. Jeffery never had any intention of cybersquatting. He searched
the WHOIS and Go Daddy records before registering any of the domain names and
only registered them on receiving confirmation that they were available.
·
Mr. Jeffery asserts that he has tried on many
occasions to resolve his differences with Complainant amicably. He just
wanted reasonable compensation for all his work and, before there could be any
settlement, he wanted Complainant to cease its false allegations, to stop its
demands for the transfer of the disputed domain names, for it to give some
consideration to Converseon’s misleading e-mails, and for it to reconsider the
unfairness of abruptly shutting down Mr.
Jeffery’s affiliate website. He never threatened Complainant, he never
attempted to exert leverage on Complainant, he always believed he was acting
within his legal rights, and he wanted to inform Complainant of his legal
options.
·
The
third element of the Complaint has not been satisfied.
·
Respondent
and Mr. Jeffery believe that
Complainant’s true motives in filing the Complaint are to acquire the disputed
domain names for its own future profit.
C. Additional Submissions
As noted above, both parties filed Additional Submissions. They are summarized below.
Complainant
Complainant’s Additional Submission repeats many of the arguments
already rehearsed in the Complaint, so the following summary is confined to the
new points raised.
Complainant dismisses Respondent’s Response as containing very little
substance, despite the fact that it consists of “15 pages of rambling text (in
direct violation of UDRP Supplemental Rule 5(a))and 69
pages of Exhibits.” It also contains not
a single source of legal authority.
Complainant sums up this case with the following passage –
Knowing
of Complainant’s exclusive rights the CRICKET service mark,
Mr. Jeffery registered the subject
domain names containing the well-known CRICKET service mark to generate
advertising and click-through revenue.
While Mr. Jeffery initially
attempted to register as an “affiliate” under Complainant’s Affiliate Program,
in multiple communications, Complainant informed him that the ”Cricket
Affiliate Agreement”, to which he agreed, explicitly prohibits the use of URL’s
containing “CRICKET” or Complainant’s other marks, and prohibits the copying of
material from Complainant’s website.
Rather than comply with Complainant’s requests to respect its valuable
intellectual property rights and to transfer the disputed domain names in exchange
for fair reimbursement, Mr. Jeffery
resorted to harassing Complainant with threats of a baseless lawsuit and even
criminal penalties, hinting that greater payment would be required. After over a month of continuous contact between
the parties, in which Complainant, its attorneys, and its marketing department
all tried to reach an amicable settlement with Mr.
Jeffery, Complainant was forced to finally file the current action in order to
protect its rights and prevent further potential consumer confusion. Immediately upon receiving the Complaint, Mr. Jeffery effected a
‘transfer’ of the disputed domain names to a ‘straw man’ in order to circumvent
the UDRP process. Despite the
supposed ‘transfer’, Mr. Jeffery has
never made any attempt to hide that the disputed domain names still are under
his full control, continuing to negotiate with Complainant, altering the
content of the <cricketwirelesscommunications.com> site, and drafting and filing the
Response.
Complainant contends that, on the basis of these facts, all 3 of the
elements in the UDRP have been established.
Complainant notes that in the Response, Mr.
Jeffery attempts to argue that after he had attempted to establish a business
relationship with Complainant, Complainant is now attempting to recover the
disputed domain names in order to profit from their commercial use. Complainant
alleges that this is untrue and irrelevant.
Complainant cannot know why Mr.
Jeffery contacted it regarding a potential relationship but, in a footnote,
Complainant points out that Mr.
Jeffery has registered several domain names consisting of the word “official”
followed by the names of a number of celebrities and politicians, and annexed
to the Additional Submission were copies of 69 domain names all owned by Mr. Jeffery, including <officialmysteryplanet.com>, <officialpuffdaddy.com>, <officialpuffdaddywebsite.com>,
<officialrapmusichalloffame.com>,
<theofficialbeyonceknowles.com>, <theofficialbeyonceknowleswebsite.com>, <the officialmichaeljackson.com> etc.
Complainant also points out that, once Mr.
Jeffery had been unambiguously notified of his unauthorized activities, he can
no longer claim innocence and good faith.
Mr. Jeffery has claimed that
Complainant has permitted many other websites that use the word “Cricket.” Complainant dismisses this argument as being
on the lines of “you can’t give me a ticket because other people were speeding
as well” and explains that at least one of the sites mentioned by Respondent is
devoted to providing online games of cricket.
As already stated in the Complaint,
Complainant is not interested in trying to prevent all uses of the word, cricket,
only those that are confusingly similar.
Although Mr. Jeffery
initially attempted to sign on as an Affiliate under Complainant’s Affiliate
program, this does not give him the right to register or use domain names which
incorporate Complainant’s trademark.
Respondent
In response to Complainant’s allegation that the Response was
over-long, Respondent’s representative, Mr.
Jeffery, points out that Complainant too has submitted 68 pages of Exhibits but
tried to hide this fact by referring to them all as Exhibit 3. He then
contends that Complainant has tried to suggest that just because a person owns
several domain names, that person has broken some law, but he reiterates that
“There is no law that says that a person can only purchase or own 1 or 2 domain
names.”
Complainant’s allegations concerning Mr.
Jeffery’s registration of other domain names is further evidence of its double
standards since it chose to reference only certain names.
None of the domain names owned by Mr. Jeffery that were exhibited to Complainant’s Additional
Response contain the word “cricket” and Mr.
Jeffery gave two examples of how his relationship with the music industry and
Beyonce Knowles had led him to register domain names relating thereto. Complainant has not provided any supporting
document that states or shows that Mr.
Jeffery had not obtained permission to register and use these domain names. Further, Complainant
cannot know of Mr. Jeffery’s 13
years of past employment in the radio and television industry nor of his
development of websites for numerous clients.
Mr. Jeffery asserts that his
Response and its exhibits expose Complainant’s double standards and its lack of
communication with its online affiliate approval company Converseon and its
field representative. These are contributing factors to
Complainant’s misunderstanding of Mr.
Jeffery’s intentions and Complainant’s lack of understanding of Go daddy’s
Parked Status rules, regulations and requirements.
Complainant’s allegations concerning a “straw man” are hearsay, pure
speculation, and without any proof. Mr. Jeffery was within his legal rights to own
and transfer domain names. Annexed to the Additional Response was a copy
of a birth certificate for Louise Oliver.
Mr. Jeffery is insistent
that Complainant should have provided proof of its allegations and dismisses
many of its allegations as being hearsay.
Respondent vehemently denies Complainant’s accusations which he
describes as false and misleading.
With regard to the allegedly false information in the WHOIS database,
Mr. Jeffery points out that the list
is at the discretion of the registrar and the owner of the domain name has no
control as to when the correct information is made available to the public.
Mr. Jeffery believes that
Complainant has shown no proof of its allegations, but has attempted to mislead
in the filing of its Complaint and its additional statements. Although Complainant
has referred to case law, this could only be relevant if all the same
conditions were met and the circumstances were the same or similar, but upon
closer inspection they are not the same.
None of the case law relates to a case where a respondent “had entered
into a written contract with the complainant where the respondent had received
written permission of its approval to use a particular domain name to be used
for its affiliate website,” and none of the case law “included a situation to
where the respondent in good faith had applied to become an authorized dealer
with the complainant to open several storefront locations,” and none of the
case law “included the registrar’s legal agreement and requirements for domains
in a ‘Parked Status.’”
Mr. Jeffery concludes by
stating that he believed he was acting within his legal rights to purchase and
transfer domain names which he believed he owned perfectly legally.
FINDINGS
1. All of the following domain names are
confusingly similar to the trademark CRICKET in which Complainant has rights –
<cricketmanwirelesscommunications.com>, <cricketmobilecommunicationsofficialwebsite.com>,
<cricketmobilecommunictions.com>, <cricketmobiletechnology.com>,
<cricketwirelesscommunications.com>,
<cricketwirelesscommunicationsofficialsite.com>,
<cricketwirelessphonesandservice.com>,
<cricketwirelessphonesandservices.com>,
<cricketwirelesstechnologyofficialwebsite.com>, <cricketwirelesstechnologyonline.com>, <cricketmanofficialwebsite.com>,
and <cwccricketwirelesscommunications.com>.
2.
Respondent
has no legitimate rights or interests in any of the 12 disputed domain names.
3.
Respondent
has acted in bad faith.
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 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;
(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.
Preliminary Issues
It has sometimes been difficult for the Panel to distinguish between Respondent,
Louise Oliver, and Mr. Delmus
Jeffery who has acted as her representative, who wrote the Responses, and who
was the original registrant for the disputed domain names.
In this Decision therefore, unless
otherwise stated, the references to “Respondent” could mean either or both of
these two persons.
As a preliminary issue, the Panel must first consider whether to
accept the Response, and if so whether it was too long.
A hard copy of the Response was received on May 7, 2007, but the Forum
never received it in electronic format and so, according to Rule 5(a), of the
Forum’s Supplemental Rules the Response is deficient. Complainant did not raise the matter,
and indeed filed an Additional Submission which referred extensively to the
Response. However, although not objecting to this failure to file an electronic copy of the
Response, Complainant has objected to its length and has even suggested that
the Panel should consider only the first 10 pages.
Respondent has countered by objecting to
the excessive length of Complainant’s Exhibits.
Rule 5(a) of the Forum’s Supplemental Rules states that a Response “may
not exceed ten (10) pages” and in the
present case, the Response was fifteen (15) pages long.
Rule 10(d) of the Rules makes it quite clear that a Panel has absolute
discretion to determine the admissibility of the evidence and there have been
many UDRP Decisions supporting this Rule.
The Panel believes that it would be inequitable to deny the Response either for
its deficiency or its length, particularly as Complainant has not been
prejudiced thereby. It was found, for example, in Metropolitan Life Insurance Company v. Secure Whois Information Service c/o DHS Admin, FA 910715 (Nat. Arb. Forum
Mar. 21, 2007) that procedural deficiencies were inconsequential and the Panel
decided to consider the Response, which was only received in hard copy before
the deadline.
Therefore, in full utilization of its discretion, the Panel has decided
to admit Respondent’s Response and not to question the superfluity of pages in
Complainant’s Exhibits to its Additional Response.
The basis of the Panel’s decision is in
its onus to prevent a default judgement; to decide the matter on its merits;
and upon its belief that the parties have not been prejudiced thus following
the reasoning in Gaiam, Inc. v.
Nielsen, FA 112469 (Nat. Arb.
Forum July 2, 2002).
Identical and/or Confusingly
Similar [paragraph 4(a)(i)]
All of the disputed domain names (with one exception, see below)
consist of the word “cricket” followed by generic descriptive wording. The word “cricket” is itself a generic term
for a game between two teams of eleven players which is played in the United Kingdom and many countries of the British Commonwealth.
In Webvan Group, Inc. v.
Atwood, D2000-1512
(WIPO Feb. 20, 2001) it was found that “[W]hen a mark is a relatively weak
non-distinctive term, courts have found that the scope of protection may be
limited to the identical term and that the addition of other descriptive matter
may avoid confusion.”
However, this Complaint is between a company
and individuals in the USA,
and the game of cricket is hardly known or played in the U.S. In any case, Complainant has obtained rights
in the word CRICKET as a trademark by virtue of its three registrations in the US for
this mark, all of which are incontestable and so not open to challenge. It also has
clearly built up significant common law rights in the name CRICKET by virtue of
having used it since March 1999, and Complainant also owns and uses the domain
name <mycricket.com>.
This is sufficient to establish rights in the
name CRICKET for the purposes of paragraph 4(a)(i) of
the Policy. For example, in Mothers Against Drunk Driving v. phix, FA
174052 (Nat. Arb. Forum May 27, 2003), it was found that the complainant’s
registration of the trademark MADD with the USPTO establishes the complainant’s
rights for the purposes of the UDRP; and in American
International Group, Inc. v. Morris, FA
569033 (Nat. Arb. Forum Dec. 6, 2005) it
was held that “Complainant has established rights in the AIG mark through
registration of the mark with several trademark authorities throughout the
world, including the United States Patent and Trademark Office…”
When comparing a trademark and a domain name
for the purposes of the Policy, it is customary to disregard generic suffixes
such as “.com” because these suffixes fail to distinguish the domain name. Thus, the
comparison is between CRICKET and the twelve (12) disputed domain names. Nine (9) of
them commence with the word “cricket” followed by various generic terms that describe Complainant’s business, the three exceptions
to this being <cricketmanwirelesscommunications.com>, <cricketmanofficialwebsite.com>, and <cwccricketwirelesscommunications.com>, which is the only one
of the twelve not to commence with “cricket.” However, even these three marks follow the
same pattern as the other nine, and are very little different from the others. The Panel
has therefore considered all 12 marks as a whole.
There have been many UDRP decisions
in which confusing sinilarity has been found when there has been a series of domain
names, all of them containing a complainant’s trademark followed by other
descriptive matter, especially if the added matter has some relationship with
the goods or services offered under the trademark(s).
See
Hyatt Corp. v.
Unasi Inc., FA 545021 (Nat. Arb.
Forum Oct. 3, 2005) (finding confusing similarity between the trademarks HYATT
and GRAND HYATT and 99 different domain names); see also UGG Holdings, Inc. v. Barclay, FA 217320 (Nat. Arb. Forum Feb. 4, 2004) (finding confusing
similarity between the trademark UGG and 23 domain names, all containing
variations on the mark, some as disparate as <australianugboots.com>); see also Diageo plc v.
Zuccarini, D2000-0996 (WIPO Oct. 22, 2000) (finding confusing similarity
between the trademark GUINNESS and a series of 11 domain names which incorporated
the trademark GUINNESS followed by between two and five generic terms many of
them derogatory).
Respondent
has not addressed the question of similarity, but it is quite clear that when
he registered the disputed domain names, Mr.
Jeffery had Complainant, its name, and its trademark in mind. His
impertinence in using the terms “official site” or “official website” in 4 of
the disputed domain names when they were clearly nothing of the sort is quite
breathtaking.
Having considered the matter, and with the
above findings in mind, the Panel rules that there is confusing similarity
between Complainant’s trademarks and all of the disputed domain names.
Rights or Legitimate Interests
[paragraph 4(a)(ii)]
This case appears to the Panel to involve
misunderstandings – by both parties.
Respondent has misunderstood the
obligations of intellectual property and contract law as well as the nature of
these proceedings, while Complainant has misunderstood Respondent’s anger and
frustration at having apparently been accepted as one of Complainant’s
affiliates, then being told that his acceptance had been a mistake without any
further explanation, and then being subjected to a series of threatening
demands to give up what he believed was his legitimate property.
In SEMCO Prods., LLC v.
dmg world media (uk)
ltd, FA 913881 (Nat. Arb. Forum
Apr. 9, 2007), it was concluded that under paragraph 4(a)(ii) of the Policy and
the factors listed in paragraph 4(c) of the Policy, a complainant must first
make a prima facie case that the respondent
has not used or made demonstrable preparations to use the disputed domain name
in connection with a bona fide offering
of goods or services, that the respondent is not commonly known by the disputed
domain name, and that the respondent is not making a legitimate noncommercial
or fair use of the disputed domain name before the burden shifts to the respondent
to show otherwise.
The Panel has concluded that
Complainant has indeed made out a prima
facie case, so it must now examine Respondent’s arguments in reply, but
before doing so it must examine the “affiliate”
position because there is no absolute clarity from the papers supplied to the
Panel as to whether Mr. Jeffery ever
was accepted as an affiliate in Complainant’s Affiliate Program. The Panel
was not assisted by the fact that neither party has supplied a copy of the
Affiliate Agreement actually signed by Respondent.
On behalf of Complainant we find, in the
Complaint and the Additional Response, the following statements: “Delmus
initially attempted to register as an ‘affiliate’ under Cricket’s Affiliate
program” and “though Delmus purports to be operating a so-called affiliate business”
and “he initially attempted to establish a business relationship with Cricket”
and “the fact that Delmus initially attempted to sign on as an affiliate with
Cricket.” From all of these, it could be
concluded that Complainant does not believe that Mr.
Jeffery ever actually became an Affiliate. If this was indeed the case, then he cannot be
in breach of the Affiliate Agreement.
However, Respondent has supplied a copy of
the first page of the Agreement (so he must have been supplied with a copy of
it) as well as a copy of an e-mail dated February 5, 2007 from “cricket@converseon.com,”
which reads, in part: “Welcome, delmus to the Cricket Affiliation Program! Your
Account has now been approved …… We welcome you to promote Cricket on your
website, in your blog, or with any other use of our existing Affiliate program
links.” The e-mail also provides a userID and a
password. However, on March 2, 2007, a Jamie Birch from
Converseon writes to Respondent to say that his Cricket account has been
suspended and, when he queries this, Mr.
Birch replies, “the application slipped by our approval status.” Respondent has also supplied copies of numerous
documents and Agreements (unsigned) which he could only have obtained if he had
been approved as an Affiliate.
In the light of all this evidence, the Panel
has concluded that Mr. Jeffery was
accepted into Complainant’s Affiliate Program by Converseon – whom Respondent
claims is Complainant’s online approval entity, a fact which Complainant has
not denied – for a short period between early February and early March. Of the 12
disputed domain names, 11 of them were registered on February 3 or 4, 2007, the
exception being <cwccricketwirelesscommunications.com>, which was registered on March 17, 2007. In fact all
of these dates are just outside the period when it can be proved that Mr. Jeffery was a part of Complainant’s program, but
in respect of the earlier dated names, Mr.
Jeffery was almost certainly negotiating to become an Affiliate at the time and,
for the later dated name, Mr.
Jeffery has explained that it was registered by him in an attempt to regain
entry into the Program.
In the light of this finding, it is clear
that Respondent is in breach of Complainant’s Affiliate Agreement, of which
Complainant provided a full copy. For example, Clause 4.2
of this reads:
4.2
Affiliate understands and agrees that Cricket may reject Affiliate’s
Application and/or terminate participation in the program at any time and for
any reason, in Cricket’s sole and absolute discretion.
Such reasons may include, without limitation:
…………
D.
use of any names, trademarks, trade names, logos and symbols associated with
Cricket, or variations and/or misspellings of any of them, in URLs to the left
of the top level domain name (e.g. “.cm”. “.net”,
“.uk” etc.)
without written permission from Cricket;
Other Clauses seek to prevent an Affiliate
from altering or modifying banner advertisements supplied by Cricket, and from
paying from any search marketing.
Mr.
Jeffery has done all of these things.
Therefore, neither he nor Louise Oliver,
his associate and successor, can have any legitimate rights to any of the
disputed domain names. Much is made in the Response of the fact that
it is the legal right of anyone to own as many domain names as he or she wishes. This is
absolutely true, but not when any of those names infringes upon the rights of
another, or when their existence is contrary to the terms of a legal contract
freely entered into.
Mr.
Jeffery feels that he has been treated unfairly but this is insufficient reason
for violating the Policy. It is clear to the Panel that, under the terms
of the Affiliate Agreement, all of which he claims to have followed,
he has absolutely no rights to register any domain name that included Complainant’s
name and trademark CRICKET. The Panel is baffled as to how he could
apparently believe otherwise, and his efforts to enlist the police and the ACLU
were futile. The phrase “through whatever measures
necessary” – to which he took such exception – is a standard phrase used in any
cease-and-desist letter issued by a firm of attorneys.
In conclusion, the Panel finds that
Respondent has no legitimate rights or interests in any of the disputed domain
names, and that paragraph 4(a)(ii) is proved.
Registration and Use in Bad Faith
[paragraph 4(a)(iii)]
The disputed domain names were transferred by
Mr. Jeffery to Respondent in
suspicious circumstances. It appears to the Panel that the initial
Complaint was filed naming Mr.
Jeffery as Respondent but that it included several domain names which did not
belong to him. When it was rejected by the Forum, Complainant
had to file an Amended Complaint. This gave Mr.
Jeffery sufficient time for him to transfer the names to Louise Oliver. Complainant
describes her as a “straw man.” This
phrase is unfamiliar to the Panel, but in the context in which it is used, it
would appear to describe a person, of either sex, whose function is to be a
front to cover the activities of someone else.
Mr. Jeffery’s explanation of the reasons
for the transfer is extremely lame and not very credible.
He denies that the lady does not exist
and has supplied a copy of a Birth Certificate for a Louise Oliver who was born
in January 1935 and so is 72 years old.
He does not explain why such a person
would need to own the disputed domain names and the Panel notes that she shares
exactly the same Post Office address as him.
Thus, there is a very clear connection
between the two persons and the Panel has concluded that the transfer was almost
certainly a sham, and probably effected as an
expedient to avoid these proceedings.
If so, it has failed.
It is forbidden, under paragraph 8(a) of the
Policy, to transfer a domain name in the course of a UDRP Complaint, but there
was probably no actual Complaint pending at the time of the transfer because an
amended Complaint was being prepared by Complainant and so, technically,
Respondent was within his rights to transfer the disputed domain names. However,
that does not do anything to remove the suspicious circumstances surrounding
the transfer and, in the opinion of the Panel, it is clear evidence of bad
faith.
Complainant has also made much of the fact
that the websites at most of the disputed domain names contain links to other and
competing third-party websites. This is indeed an example of bad faith, and
there have been many UDRP Decisions to support this.
However, Mr.
Jeffery has explained that these links were not created by him but by Go Daddy,
who post such links as a matter of course until the owner of a domain name
registered with them create their own website.
The Panel is aware of this practice and does not therefore criticize Respondent
or find bad faith proved as a result of these links.
Complainant has accused Mr. Jeffery of “phishing,” something which he has
strongly denied. The Panel has found no evidence of this.
Complainant asserts that Respondent
is using one of the disputed domain names, namely <cricketwirelesscommunications.com>, to mimic Complainant’s
website at the <mycricket.com>
domain name and to sell Complainant’s wireless communication products and
services without Complainant’s permission.
“Mimic” is perhaps too strong a word, as
the appearance of the two sites is very different.
However, there are certainly some
similarities and many references on Respondent’s site to Complainant’s
services. It is also noteworthy that
visitors to Respondent’s site seeking more information are invited to contact
“Cricket Wireless Communications” at the address which is shared by Mr. Jeffery and Louise Oliver.
It would appear however that the entire
content of this site has now been removed.
The references to Complainant’s
goods and services is also an example of registration and use in bad faith contrary
to paragraph 4(b)(iii) of the Policy. For example, in Fossil, Inc. v. NAS,
FA 92525 (Nat. Arb. Forum Feb. 23, 2000), the domain name
<fossilwatch.com> was
transferred from the respondent, a watch dealer not otherwise authorized to
sell the complainant’s goods, to the complainant; also, in G.D.
Searle & Co. v. Celebrex Cox-2 Vioxx.com,
FA 124508 (Nat. Arb. Forum Oct. 16, 2002), it was held that “Unauthorized use
of Complainant’s CELEBREX mark to sell Complainant’s products represents bad
faith use under paragraph 4(b)(iii) of the Policy.” It is also
an example of bad faith according to paragraph 4(b)(iv)
of the Policy if a respondent is diverting Internet users seeking the complainant
to its own website for commercial gain.
See
World Wrestling Federation Entm’t, Inc.
v. Ringside Collectibles,
D2000-1306 (WIPO Jan. 24, 2001)
(concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name
resolved to a commercial website that the complainant’s customers were likely
to confuse with the source of the complainant’s products, especially because of
the respondent’s prominent use of the complainant’s logo on the site); see also Fanuc Ltd v.
Machine Control Services, FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding
that the respondent violated paragraph 4(b)(iv) of the Policy by creating a likelihood
of confusion with the complainant's mark by using a domain name identical to
the complainant’s mark to sell the complainant’s products).
In the light of all the evidence, the Panel
finds that Respondent acted in bad faith, and that paragraph 4(a)(iii) is proved.
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 following
domain names be TRANSFERRED from Respondent to Complainant –
<cricketmanwirelesscommunications.com>, <cricketmobilecommunicationsofficialwebsite.com>, <cricketmobilecommunictions.com>, <cricketmobiletechnology.com>, <cricketwirelesscommunications.com>,
<cricketwirelesscommunicationsofficialsite.com>, <cricketwirelessphonesandservice.com>,
<cricketwirelessphonesandservices.com>, <cricketwirelesstechnologyofficialwebsite.com>, <cricketwirelesstechnologyonline.com>, <cricketmanofficialwebsite.com>,
and <cwccricketwirelesscommunications.com>.
David H Tatham, Panelist
Dated: May 29, 2007
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