Americatel Corporation v. abclink.net c/o Federico
Sanchez
Claim Number: FA0704000967819
Complainant is Americatel Corporation (“Complainant”), represented by Michael
D. Fishman, of Rader, Fishman & Grauer PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lineapais.com>, registered with Enom, 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.
Honorable James A. Carmody, Honorable Ralph Yachnin, and Chairperson Sandra J. Franklin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 24, 2007.
On April 24, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <lineapais.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 22, 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@lineapais.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2007, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable James A. Carmody, Honorable Ralph Yachnin, and Sandra J. Franklin 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lineapais.com> domain name is identical to Complainant’s LINEAPAIS mark.
2. Respondent does not have any rights or legitimate interests in the <lineapais.com> domain name.
3. Respondent registered and used the <lineapais.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Americatel is one of the largest
telecommunications companies serving the U.S. Hispanic and other Hispanic
markets. Complainant owns the registered
Trademarks for LINEAPAIS and LINEA PAIS AMERICATEL, with commercial use dating
back to March 2005, for a particular line of telephone services marketed widely
to Spanish-speaking customers in the
Respondent registered the domain name <lineapais.com> on May 24, 2005.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the LINEAPAIS mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”). Complainant filed for registration of the LINEAPAIS mark prior to Respondent’s registration of the <lineapais.com> domain name. The Panel finds that Complainant’s rights in the LINEAPAIS mark date back to the filing date of the mark with the USPTO. 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.”)
Prior to the issuance of the Registration certificate form the USPTO, Complainant had also established common law rights in the LINEAPAIS mark through continuous use since March of 2005, when Complainant began widely marketing and selling its telecommunication services internationally under the LINEAPAIS mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Respondent
registered the <lineapais.com> domain name just
after Complainant’s marketing launch of the LINEAPAIS mark, evidence of an
opportunistic registration of the domain name.
See Sota v. Waldron,
D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of
the domain name at the time of Complainant’s announcement “strongly indicates
opportunistic registration”).
Respondent’s <lineapais.com> domain name is identical to Complainant’s LINEAPAIS mark because Respondent’s domain name uses Complainant’s mark in its entirety and merely adds a generic top-level domain (“gTLD”) “.com” to the mark. The addition of a gTLD is not significant since all domain names require one. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”)
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Once Complainant makes a prima facie case that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it has rights or legitimate interests in the domain name. 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). Complainant is found to have established its prima facie case.
Respondent has offered no evidence and no evidence is
present in the record to indicate that Respondent is commonly known by the <lineapais.com> domain name. The Panel concludes
that Respondent has failed to establish rights or legitimate interests under
Policy ¶ 4(c)(ii). See 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 <lineapais.com> domain name to redirect Internet users to Respondent’s website which originally displayed a website offering services in competition with Complainant’s services under the LINEAPAIS mark, which does not constitute use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”)
Complainant also states that, following its cease and desist order, Respondent’s <lineapais.com> domain name resolved to a website offering the disputed domain name for sale, further evidence that the domain name is not being used in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <lineapais.com> domain name to
redirect Internet users to Respondent’s website offering competing services to
those of Complainant’s services under the LINEAPAIS mark for the commercial
gain of Respondent. Because Respondent’s
<lineapais.com> domain name is identical to Complainant’s mark, Internet users may become
confused as to Complainant’s affiliation with Respondent’s website, to the
commercial gain of Respondent, which is evidence of 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 Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent
and the complainant were in the same line of business and the respondent was
using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE
mark to attract Internet users to its <efitnesswarehouse.com> domain
name).
Respondent registered
the disputed domain name for the primary purpose of disrupting Complainant’s
business, additional evidence of bad faith registration and use under Policy ¶
4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding that the respondent registered the domain name in
question to disrupt the business of the complainant, a competitor of the
respondent).
Finally,
Respondent’s use of the <lineapais.com> domain name to offer to sell the domain name is yet more evidence of bad
faith registration and use under Policy ¶ 4(b)(i). See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the
disputed domain name registration for sale establishes that the domain name was
registered in bad faith under Policy ¶ 4(b)(i).”)
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lineapais.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable James A. Carmody, Panelist
Honorable Ralph Yachnin, Panelist
Sandra J. Franklin, Chairperson, Panelist
Dated: June 11, 2007
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