WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VoiceStream Wireless Corporation v. Dotsan
Case No: D2001-1412
1. The Parties
The Complainant is VoiceStream Wireless Corporation of 12920 SE 38th Street, Bellevue, Washington 98006, United States of America.
The Respondent is Dotsan of 35-37 Sunder Mahal, Mumbai, India 400021.
2. The Domain Name and Registrar
The domain name at issue is .
The Registrar is BulkR, Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on November 29, 2001 [electronic version] and on December 3, 2001[hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is December 17, 2001.
On December 4 2001, the Center transmitted via email to BulkR, Inc, a request for registrar verification in connection with this case and on December 11, 2001, BulkR, Inc transmitted by email to the Center BulkR's verification response confirming that the registrant is Dotsan and that the contact for both administrative and technical purposes is R S Potdar of the same address as Dotsan.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on December 17, 2001, to No Response was received from the Respondent by the due date of January 6, 2002. On January 9, 2002, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of Administrative Proceeding. No reply by the Respondent to the Notification of the Respondent's Default was received. Having received Declarations of Impartiality and Independence and Statements of Acceptance from the three Panelists, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Dr. Dan Hunter, Dr. Vinod K Agarwal and Mr. David Perkins were formally appointed as Panelists. The Projected Decision Date was March 27, 2002. The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. Having verified the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent. 4. Factual Background 4.1 The Business of the Complainant 4.1.1 The Complainant is a Delaware Corporation with its principal place of business in Bellevue, Washington, United States of America. Founded in 1996, the Complainant is one of America's largest and best-known wireless communication providers. It is currently America's fifth largest wireless phone company, with approximately 15,000 employees serving 5.2 million subscribers. 4.1.2 This business was originally operated by the Complainant's former parent company, Western Wireless Corporation. In 1999, the Complainant was spun-off by Western Wireless Corporation as a separate entity. 4.2 The Complainant's VOICESTREAM Trademark 4.2.1 From its inception in 1996 the Complainant used, as did its former parent company, Western Wireless Corporation, the VOICESTREAM trademark to identify its goods and services. The VOICESTREAM mark is the subject of five registrations in the United States, 17 additional pending applications in the United States, 2 registrations in Mexico and a pending application in Europe. The US registrations comprise the following: Registration No. Mark International Class(es) Application and Registration Dates 2,045,084 VOICESTREAM 38 Filed October 10, 1995 2,060,060 VOICESTREAM 9 Filed December 15, 1995 2,504,680 VOICESTREAM 38 Filed March 14, 2001 2,496,008 VOICESTREAM WIRELESS 9 Filed July 6, 2000 2,507,090 VOICESTREAM WIRELESS 38 Filed March 14, 2001 4.2.2 The Complainant has spent substantial time, effort and money advertising and promoting the VOICESTREAM trademark in the United States and elsewhere. In particular, the Complaint sets out the following: - The Complainant owns over 430 Personal Communication Services licenses in the United States covering a population of 272 million people. - In the financial year 2000, the Complainant's revenues exceeded US$1.9 billion. - Since 1998 the internationally known actress, Jamie Lee Curtis, has advertised the Complainant's services in print, television and radio advertisements. In 1999 the advertising campaign received the Best Overall Excellence in Marketing award from the Cellular Telecommunications and Internet Association [CTIA}. - The Complainant uses and operates the Global System for Mobile [GSM] communications technology platform which has been adopted as the standard by the United States and 158 other countries and which accounts for some 70% of the total digital wireless market. The Complainant is the only US wireless telecommunications provider with a national GSM wireless technology network, which gives customers the ability to use their VOICESTREAM number when travelling internationally and supports roaming capabilities from other GSM customers travelling to the United States. - The Complainant has international roaming agreements with more than 164 of the major operators worldwide providing service in over 71 countries including: Australia, China, Chile, France, Germany, Greece, Hong Kong, India, Italy, the Netherlands, Russia, Saudi Arabia, Spain, Switzerland and the United Kingdom. 4.2.3 The Complaint states that the Complainant's achievements have generated tremendous attention in the media and as a result of its use and promotion the VOICESTREAM name and mark have become a famous and highly distinctive trademark. 4.3 The Complainant's Domain Name The Complainant operates a website at www. which generates some 351,800 hits per week. Just over 50% of those hits are by customers accessing wireless messaging services through the Complainant's related domain name. During 2001 the Complainant generated an average of 2,261 hand set sales per month through its www. website. 4.4 The Respondent No Response has been filed and so nothing is known of the Respondent except what is contained in the Complaint. This is that the domain name in issue was registered on September 5, 2001 and that on about September 7, 2001, it resolved to the website of , a company which resells commercial goods and which is owned and operated by eB, the well-known auction site. H operates an Affiliate Program whereunder website operators are paid US$5.00 for each qualifying transaction resulting from a link on a referring web page. The website carries the caption: "The Smartest Place to Buy and Sell Books, Music, Movies, Games and more �." Thus, according to the Complainant, the Respondent registered , which is a common misspelling of its genuine domain name, so as to redirect consumers making a typographical error when seeking the Complainant's website, thereby potentially generating referral fees from . 5. The Parties' Contentions The Complainant's Case 5.1 Identical or Confusingly Similar The Complainant's case is that the domain name in issue is in substance identical to its VOICESTREAM trademark, omitting only the letter R. It is also confusingly similar to the VOICESTREAM trademark. 5.1.1 By linking the domain name to the H website, the Respondent is seeking to benefit by trading-off the goodwill of the VOICESTREAM mark. 5.1.2 Further, the domain name in issue will create the impression that the products and services accessible through are affiliated with the Complainant. So, consumers seeking the Complainant's Voicestream website, who mistakenly omit the R in , will be misdirected to the Respondent's website and on to the site. The net result will be customer confusion and dilution of the Complainant's valuable and distinctive VOICESTREAM trademark. 5.1.3 In addressing confusing similarity relevant considerations are the similarity of: - the marks; The Complainant basis this proposition on See Yahoo! Inc v. Eitan Zviely, et al. [WIPO Case No. D2000-0273]. That case involved 37 domain names which incorporated the YAHOO! trademark or a close variant of it. The Panel found that the Respondent was deliberately attempting to direct misled Yahoo! users to his website: "Confusing similarity is what Zviely has been counting on" Here, consumers seeking the Complainant's www. website, but who mistype or misspell by omitting the letter R in voicestream, will be misdirected to the Respondent's website with the consequences set out in the preceding paragraph. 5.1.4 The Complainant also cites the Decision in Williams-Sonoma Inc v. Polanski [WIPO Case D2001-0236] where confusing similarity was found where the Complainant's registered trademark WILLIAMS-SONOMA was different to the Respondent's domain name by omission of only a single letter, in that case the letter "S". The Panel held such omission "does not alter the obvious confusing similarity between the domain name and the Complainant's marks." The Williams-Sonoma case is referred to further in paragraph 5.3.3 below. 5.1.5 The Complainant also cites the Decision in EAuto LLC v. Triple S Auto Parts, etc [WIPO Case No. D2000-0047]. There, the domain name in issue was . The Complainant owned a US registered trademark for EAUTO and was in the business of offering a full range of automotive information to companies and individuals through its website at . The Respondent had been in the automotive lamp business for over 10 years and in 1999 registered the domain name in issue in order to sell a full range of automobile lamps through its website under the domain name. As to confusing similarity, the Panel found EAUTO was a distinctive mark, "� albeit one at the weaker end of the spectrum." The Panel went on to state: "When a domain name incorporates, in its entirety, a distinctive mark, that creates sufficient similarity between the mark and the domain name to render it confusingly similar." 5.1.6 Based on these authorities and the facts in this case, the Complainant contends that the domain name in issue is both identical and confusingly similar to its VOICESTREAM mark. 5.2 Rights or Legitimate Interests The Complainant's case is as follows. 5.2.1 The VOICESTREAM mark was first used in commerce in February 1996, and both that use and certain of the registered VOICESTREAM trademarks predate registration on September 5, 2001, of the domain name in issue. It follows that before September 2001, when the domain name was registered and used in relation to the website, the Respondent had constructive knowledge of the Complainant's VOICESTREAM mark and business. The extent of the Complainant's business under and by reference to the VOICESTREAM name and mark in the year 2000 was significant [see, paragraphs 4.2.2 and 4.3 above] and this further provided actual or at least further constructive notice to the Respondent by September 2001, when registering the domain name in issue. The Complainant cites The Step2 Company v. Softastic Corp [WIPO Case No. D2000-0393] as authority for the proposition that registration of a US trademark constitutes constructive notice to a Respondent of the registrant's claim to own such trademark. In that case, the domain name in issue was . The Complainant held registered trademarks for STEP2 in Canada, Taiwan, Thailand and the United States, the earliest dating from 1992, for a variety of goods. The domain name in issue was parked on a domain name auction site. No Response was filed. In relation to the issue of registration in bad faith, the Panel referred to 15 USC section 1972 which provides: "Registration of a mark on the principal register provided by this chapter or under the Act of March 3, 1881, or the Act of February 20, 1905, shall be constructive notice of the registrant's claim of ownership thereof." The Complainant then cited Sunglass Hut Corporation v. AAANet Inc [NAF Case No. FA0003000094370] for the proposition that evidence of widespread use of a Complainant's trademark carries with it an inference that the Respondent had actual or at least constructive notice of prior use of the mark and the Complainant's rights in the mark before the domain name in issue was registered. In that case, the domain name in issue was registered in 1998. The Complainant's SUNGLASS HUT mark was first used in commerce as early as 1971, it was registered as a US trademark in 1988 and the SUNGLASS HUT name was known internationally, the Complainant trading under that name in 50 countries worldwide. The Complainant had its own www. website from which it had sold sunglasses, watches and accessories since 1995. The domain name in issue resolved to the Respondent's AAAnet.Inc homepage, from which the Respondent also sold sunglasses, watches and accessories. The Panel, finding for the Complainant, stated: "The evidence of widespread use of SUNGLASS HUT worldwide allows the inference that respondent had actual or at least constructive notice as a competitor of the prior use of the mark and name." 5.2.2 The Complaint avers that there has been no bona fide offering of goods or services by the Respondent under the domain name in issue, merely the linking to the online auction site. Further, the Complainant's case is that [for the reasons set out in paragraph 5.2.1 above], the Respondent had actual or constructive notice of the Complainant's rights to and business under the VOICESTREAM mark in September 2001, when registering the domain name in issue and linking it to the site. So, the Complainant says, neither the registration nor the subsequent use can be bona fide for the purpose of paragraph 4(c)(i) of the Policy. 5.2.3 The Respondent has not been commonly known by the domain name . 5.2.4 The use made by the Respondent of the domain name in issue [see, paragraph 5.1.1 above] is for commercial gain under the Affiliate program of H. As demonstrated above, that use is not fair use without intent to misleadingly divert the Complainant's customers or to tarnish the VOICESTREAM trademark. 5.2.5 It follows, the Complainant says, that the Respondent cannot satisfy any of the circumstances set out in paragraph 4(c) of the Policy which demonstrate rights or interests to the domain name in issue. 5.3 Registered and Used in Bad Faith The Complainant's case is as follows: 5.3.1 Because the Respondent had actual or constructive knowledge before registering the domain name in issue in September 2001, of the Complainant's prior widespread use of and reputation in the VOICESTREAM trademark, including registration of that mark in the United States, registration of the domain name cannot have been in good faith. 5.3.2 The Complainant asserts that the circumstances of paragraph 4b(iv) are satisfied in this case, namely that by using the domain name in issue the Respondent has intentionally attempted to attract, for commercial gain through the Affiliate program, Internet users to the H website, by creating a likelihood of confusion with the VOICESTREAM mark as to the source, sponsorship, affiliation or endorsement of that website. 5.3.3 The Complainant cites two decisions under the Policy where similar conduct by the Respondent was found to constitute bad faith registration and use. These are: Williams-Sonoma Inc v. Polanski [WIPO Case No. D2001-0236].There, the domain name in issue was . The Complainant retailed cookware and associated products through 200 of its US WILLIAMS-SONOMA retail outlets and through its mail order catalogue mailed to some 2.5 million US homes each month. It had US registered trademarks for WILLIAMS-SONOMA in Classes 16: 24: 25: 30: 31 and 35. It also had the mark registered in Australia: Hong Kong: Japan: Korea: Singapore: the European Community: and New Zealand. No Response was filed. As to use in bad faith, pointing to the various trademark registrations, the inherent distinctiveness of that mark and its long and extensive use, the Panel held - quoting from the case Telstra Corporation Limited v. Nuclear Marshmallows [WIPO Case No. D2000-0003] - it was "� not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name." As to registration in bad faith, the Panel stated: "It is similarly inconceivable that Respondent chose this domain name, which is virtually identical to Complainant's inherently distinctive and highly publicised WILLIAMS-SONOMA mark, without prior knowledge of such mark. This evidences that Respondent registered WILLIAM-SONOMA.COM in bad faith." Inter-IKEA v. Polanski [WIPO Case No. D2000-1614]. This was an earlier case involving the same Respondent. Here, he had registered . The Complainant has started trading under the IKEA name and mark in 1950. It had over 1200 trademark registrations for the IKEA mark in more than 70 countries. The Respondent's domain name originally resolved to a casino online virtual gambling site. The Panel had no hesitation in finding that the Respondent could not have been unaware of the Complainant's activities under the IKEA name and mark. As to use, the Panel held: "It is difficult to imagine any plausible future active use of the domain name by the Respondent that would not be illegitimate, such as being infringement of Complainant's well-known mark or an infringement of unfair competition and consumer protection legislation." The Respondent's Case 5.4 As stated, no Response has been filed by the Respondent. 6. Discussion and Findings 6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following: (i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. 6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy. 6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. 6.4 Identical or Confusingly Similar The domain name in issue is identical to the Complainant's VOICESTREAM registered trademark, save for omission of the letter "R". The Panel is persuaded by the case of confusing similarity made out by the Complainant. The Complaint, therefore, satisfies the first limb of paragraph 4(a) of the Policy. 6.5 Rights or Legitimate Interests None of the circumstances in paragraph 4(c) of the Policy which demonstrate rights to or legitimate interests in a domain name are present in this case. Further, the Panel is satisfied that before the domain name in issue was registered the Respondent had constructive, if not actual, notice of the Complainant and its VOICESTREAM business by virtue of both the existence of its registered US trademarks and its widespread and well-publicised activities. It follows, in the Panel's view, that any use by the Respondent of the domain name could not have been bona fide or fair. The Complaint, therefore, satisfies the second limb of paragraph 4(a) of the Policy. 6.6 Registered and Used in Bad Faith 6.6.1 It follows from the Panel's finding in relation to rights or legitimate interests, that the Panel also finds that the domain name was registered in September 2001, in bad faith. 6.6.2 As to use, where - as in this case - the Respondent has no rights or legitimate interests in the domain name in issue, use in the circumstances set out in paragraph 5.3.2 above evidences bad faith of the type prescribed in paragraph 4(b)(iv) of the Policy. 6.6.3 The Complaint, therefore, also meets the twin requirements of paragraph 4a(iii) of the Policy. 7. Decision For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. Accordingly, the Panel requires that registration of the domain name be transferred to the complainant. David Perkins Dan Hunter Vinod K. Agarwal Dated: March 25, 2002
Registered March 11, 1997
Registered May 6, 1997
Registered November 6, 2001
Registered October 9, 2001
Registered November 13, 2001
- the products and services;
- the users; and
- the channels of distribution.
Presiding Panelist
Panelist
Panelist
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