Nextel Communications Inc. v. Paul
Langford
Claim Number: FA0505000477061
PARTIES
Complainant
Nextel Communications Inc. (“Complainant”),
is represented by Sherri N. Blount, of Morrison and Foerster,
2000 Pennsylvania Ave. NW, Suite 5500, Washington, DC 20006. Respondent is Paul Langford (“Respondent”), 5631 Elena Dr., Holiday, FL 34690.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <nextelcupcollectables.net>,
registered with Go Daddy Software, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Hon.
Richard B. Wickersham, Hon. Tyrus R. Atkinson, Jr. and James A. Carmody, Esq.,
Chair, as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 16, 2005.
On
May 16, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <nextelcupcollectables.net>
is registered with Go Daddy Software, Inc. and that 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 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 8,
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@nextelcupcollectables.net 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 June 15, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed the Hon. Richard B. Wickersham, Hon. Tyrus R. Atkinson, Jr.
and James A. Carmody, Esq., as Panelists.
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
Respondent’s <nextelcupcollectables.net>
domain name is confusingly
similar to Complainant’s NEXTEL mark.
2.
Respondent does not have any rights or legitimate interests in the <nextelcupcollectables.net> domain
name at issue.
3.
Respondent has registered and used the domain name at issue in bad faith.
B.
Respondent has failed to submit a Response in this proceeding. Accordingly,
every reasonable factual assertion made by Complainant will be presumed to be
true and not contested by Respondent.
FINDINGS
Complainant, Nextel Communications Inc.,
has used the NEXTEL mark in commerce since at least as early as 1988 in
connection with wireless telecommunications services, including wireless
telephones and wireless telephone accessories.
Complainant is the owner of several registrations and pending applications
with the United States Patent and Trademark Office (i.e., Reg. No. 1,637,139,
issued March 5, 1991; Reg. No. 1,884,244, issued March 14, 1995; Reg. No.
2,358,982, issued June 20, 2000; Ser. No. 76/280,533, filed July 5, 2001). Additionally, Complainant has had a
cross-license trademark agreement to use the NASCAR NEXTEL CUP mark in
connection with wireless telephones, promotional items, and wireless
accessories since as early as 2003.
Complainant asserts that the <nextelcupcollectables.net> domain name is confusingly similar to
Complainant’s NEXTEL mark because the domain name incorporates Complainant’s
NEXTEL mark in its entirety with the addition of the generic words “cup” and
“collectables.” Further, the
addition of the generic top-level domain
“.com,” is insufficient to distinguish the domain name from the mark, says
Complainant.
Complainant further contends that
Respondent had prior constructive, if not actual, knowledge of Complainant’s
rights in the NEXTEL mark. Complainant
has used the mark for over fifteen years and has advertised the mark
extensively throughout the United States and abroad.
Complainant asserts that Respondent is
not an authorized dealer of Complainant, and does not have Complainant’s
permission to appropriate or use the NEXTEL mark to register domain names for
any other purposes. There is no
evidence that Respondent is commonly known by the domain name at issue.
Respondent’s commercial use of the
misleading domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv).
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.
Complainant has established rights
in the NEXTEL mark. See FDNY Fire
Safety Educ. Fund, Inc. v. Miller,
FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the
date that its successful trademark
registration was filed with the U.S. Patent and Trademark Office); see also
J. C. Hall Co. v. Hallmark Cards,
Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the
Principal Register is prima facie proof of continual use of the mark, dating
back to the filing date of the application for registration); 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 and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that 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 and
has not done so.
Complainant asserts that the <nextelcupcollectables.net> domain name is confusingly similar to
Complainant’s NEXTEL mark because the domain name incorporates Complainant’s
NEXTEL mark in its entirety with the addition of the generic words “cup” and “collectables.” A domain name that combines a generic term with a trademark does not eliminate the confusingly similar nature
between the domain name and the mark. See
Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24,
2000) (finding that “genericness, if
established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable
registration”); see also L.L.
Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000)
(finding that combining the
generic word “shop” with Complainant’s registered mark L.L. BEAN does not circumvent Complainant’s rights in the mark nor
avoid the confusing similarity aspect of the ICANN Policy); see also PG&E Corp. v. Anderson, D2000-1264
(WIPO Nov. 22, 2000) (“Respondent does not by adding the common descriptive or
generic terms ‘corp’, ‘corporation’ and
‘2000’ following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant.”).
The addition of the generic top-level domain “.com,” is insufficient
to distinguish the domain name from the mark.
See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to Complainant’s mark because the
generic top-level domain (gTLD)
“.com” after the name POMELLATO is not relevant); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000)
("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . .
. without legal significance since use of
a gTLD is required of domain name registrants."); see also Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to Complainant’s TERMQUOTE mark).
Complainant has established Policy ¶
4(a)(i).
Respondent is not commonly known by
the domain name at issue and is not a dealer or licensee of Complainant. Pursuant to Policy ¶ 4(c)(ii), Respondent
lacks rights in the domain name. See RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing
that one has been commonly known by the domain name prior to registration of
the domain name to prevail"); see also
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s
registration; (3) Respondent is not commonly known by the domain name in
question).
Complainant has established Policy ¶
4(a)(ii).
Respondent’s commercial use of the
misleading domain name constitutes bad faith pursuant to Policy ¶
4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat.
Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain
entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a
consumer searching for Complainant would become
confused as to Complainant’s affiliation with the resulting search engine website”
in holding that the domain names were registered and used in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
Respondent had prior constructive,
if not actual, knowledge of Complainant’s rights in the NEXTEL mark. Complainant has used the mark for over
fifteen years and has advertised the mark extensively throughout the United
States and abroad. Complainant asserts that prior UDRP decisions support the
conclusion that Respondent’s registration and use of the domain names
constitutes bad faith due to Respondent’s actual or constructive knowledge of Complainant’s mark. See
Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000)
(finding that evidence of bad faith includes actual or constructive knowledge
of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given the worldwide prominence of the
mark and thus Respondent registered the domain name
in bad faith); see also 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”).
Complainant has established Policy ¶
4(a)(iii).
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 <nextelcupcollectables.net>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Chair
Hon. Tyrus R.
Atkinson, Jr., Panelist
Hon. Richard B. Wickersham, Panelist
Dated: June 28, 2005
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