MetroPCS, Inc. v. Ronald Robertson
Claim Number: FA0609000809749
Complainant is MetroPCS, Inc. (“Complainant”), represented by Daniel F. Perez, of Akin, Gump, Strauss, Hauer & Feld, L.L.P., 1700 Pacific Avenue, Suite 4100, Dallas, TX 75201. Respondent is Ronald Robertson (“Respondent”), 5881 Fox Run Road, Rex, GA 30273.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <metropcshsi.com>, registered with Wild West Domains, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2006.
On September 30, 2006, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <metropcshsi.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 October 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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 <metropcshsi.com> domain name is confusingly similar to Complainant’s METROPCS mark.
2. Respondent does not have any rights or legitimate interests in the <metropcshsi.com> domain name.
3. Respondent registered and used the <metropcshsi.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MetroPCS, has been in the business of providing telecommunications services, hardware, and accessories for use in conjunction with wireless telephony and broadband services since 2002. In December of the same year, Complainant registered four trademarks with the United States Patent and Trademark Office (‘USPTO”) under its METROPCS mark (Registration Nos. 2,865,446; 2,803,097; 2,784,778; and 2,792,316). Complainant registered its <metropcs.com> domain name in April of 1999.
Respondent’s <metropcshsi.com> domain name, which was registered in April of 2006, resolves to a web site that offers “METROPCS HSI” (“HSI” referring to “high speed internet”) in exchange for a monthly fee. The web site further states that “METROPCS is now hiring[.]”
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 METROPCS mark through registration of the mark with the USPTO. 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s mere addition of the acronym “HSI” to Complainant’s entire METROPCS mark is insufficient for purposes of avoiding a finding of confusing similarity under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
In light of the foregoing analysis, the Panel finds that Complainant has satisfied Policy 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <metropcshsi.com> domain name. Provided Complainant makes a prima facie case under Policy ¶ 4(a)(ii), Respondent then bears the burden of rebutting this presumption. 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”). Thus, the Panel finds that Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain name constitutes a prima facie case pursuant to the Policy.
Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain names. See 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.”). However, despite the presumptive effect of Respondent’s inaction, the Panel chooses to analyze the relevant factors under Policy ¶ 4(c).
In connection with registering the disputed <metropcshsi.com> domain name, Respondent simply listed himself as the registrant. While the record clearly indicates that Respondent performed this mandatory and perfunctory task, the record is void of any other attempt by Respondent to establish that he is commonly known by the disputed domain name. Indeed, given the well-established nature of Complainant’s METROPCS mark, Respondent must put forth strong evidence to prevail on this argument. This has simply not been done here. As such, Respondent has no rights or legitimate interests under Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”). Further, despite Respondent’s overt implication of affiliation with Complainant’s mark, Respondent apparently never attempted to acquire licenses or permission allowing it to wholly incorporate Complainant’s METROPCS mark in its <metropcshsi.com> domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
In addition to Respondent’s failure to establish that it is commonly known by the <metropcshsi.com> domain name, Respondent has failed to establish a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s domain name resolves to a website that primarily offers high speed internet service to consumers in exchange for a monthly fee. The message on the site makes no attempt at distinguishing Respondent’s business from Complainant’s. In fact, a contrary suggestion of affiliation is arguably apparent: “That’s right METROPCS High Speed Internet is now here! You’ve heard of MetroPCS Cellular and their Pre-Paid phones, well now METROPCS HIS brings that same Pre-Paid idea to the Internet market!” As such, the Panel finds Respondent’s actions demonstrates its lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
In light of the foregoing analysis, the Panel finds that Respondent has failed to show any rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). As such, Complainant has satisfied policy ¶ 4(a)(ii).
The recorcd indicates that Respondent sought to benefit commercially from Complainant’s well-established goodwill. Respondent’s web site offers high speed internet services while giving the false impression of being affiliated with Complainant and its well-known METROPCS mark. This is precisely the sort of conduct that falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Taking into account all of the facts and circumstances presented by the record, the Panel finds that Complainant has shown that Respondent’s conduct falls within Policy ¶ 4(b) and thus has satisfied the requirements of 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 <metropcshsi.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 13, 2006
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