WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Wireless Matrix Corporation v. Utility Associates - Ted Davis
Case No. D2008-1104
1. The Parties
Complainant is Wireless Matrix Corporation, Reston, Virginia, United States of America, represented by Thelen Reid Brown Raysman & Steiner LLP, United States of America.
Respondent is Utility Associates - Ted Davis, Herndon, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2008. On July 22, 2008, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On that same day, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2008. Respondent did not submit any Response. Accordingly, the Center notified Respondent’s default on August 19, 2008.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 26, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Because Respondent has not filed a Response, the following facts are taken from the Complaint and are accepted as true in the circumstances of this case.
Complainant, directly and through its wholly owned subsidiary, Wireless Matrix USA, Inc., claims to own exclusive rights in the mark WIRELESS MATRIX (“the Mark”) and derivatives thereof. Under the Mark, Complainant offers a wide range of goods and services in the area of wireless data communication and fleet management and related goods and services. Its business currently supports more than 50,000 end-users. Complainant has used the Mark since at least May 1, 2000. Also, Complainant claims ownership rights in the domain names and .
Respondent registered the domain name in dispute, (the “Domain Name”), on October 31, 2006. From information Complainant has presented here, it appears Respondent originally registered the Domain Name on April 12, 2002 with the registrar eNom, Inc. under the name “Ted Davis at www.utility- .” That registration appears to have been in affect from April 12, 2002 through at least April 12, 2005. In the current registration with Network Solutions, Ted Davis is listed as part of the registrant name, administrative contact, and technical contact. Complainant represents, as of July 18, 2008, the websites accessible by using other domain names having the same registrant contact information and are the same as the website at the Domain Name.
Complainant asserts that on or about June 23, 2008, Complainant’s counsel sent a letter to Respondent at the administrative address listed in the Domain Name registration demanding that Respondent immediately cease all infringing activity and transfer the Domain Name to Complainant (The Panel did not find this letter in the record.). Complainant also claims it did not receive any reply to this letter. On or about July 21, 2008, Complainant’s counsel attempted to access Respondent’s website via the Domain Name and found that it was still active, available, and pointing to Respondent’s “Utility Associates” website (or a duplicate thereof).
5. Parties’ Contentions
A. Complainant
Complainant is relying upon its common law trademark and service mark rights in the WIRELESS MATRIX mark in this proceeding. The Domain Name is confusingly similar to the Mark, using the Mark in its entirety. Respondent does not have any rights or legitimate interests in the Domain Name. Complainant has not licensed or provided any other permission to use the Mark. Respondent adopted and is using the Domain Name in bad faith.
B. Respondent
Respondent did not file a Response or otherwise reply to the Complainant.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent 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.
A. Identical or Confusingly Similar
Complainant has not proffered a United States of America (“United States”) federal trademark registration to prove such rights in the mark WIRELESS MATRIX. Complainant is relying on its common law rights in the Mark. As previous panels have held, under United States law, an unregistered trademark that is used in commerce may be treated as a trademark for the purposes of paragraph 4(a)(i) of the Policy if Complainant can show that the mark is inherently distinctive or at least has acquired secondary meaning and thus has become a distinctive identifier associated with Complainant or its goods and services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview”), paragraph 1.7. Relevant evidence of such secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition”. Id. By virtue of the evidence Complainant has made of record here, the Panel finds Complainant has demonstrated acquired distinctiveness sufficient to establish common law trademark rights.
As prior panels also have recognized, the incorporation of a trademark in its entirety in a domain name is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark for purposes of the Policy. Insofar as the Domain Name incorporates verbatim the Mark (WIRELESS MATRIX), in which Complainant has rights, the Panel finds the Domain Name is identical to the Mark. When comparing a challenged domain name and a trademark, the addition of the “.com” suffix is irrelevant for the purpose of determining whether the domain name is identical or confusingly similar to a trademark. Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321,WIPO Case No. D2002-0499.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with Complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant’s uncontested facts establish: (1) Complainant has not licensed or otherwise permitted Respondent to use the Mark in any manner including as a domain name; (2) Respondent has not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services (the Panel finds Respondent’s use of the Domain Name is an infringing one); (3) Respondent has not been and is not commonly known by the Domain Name (it appears Respondent is known by Utility Associates); and (4) Respondent is not making a legitimate noncommercial or fair use of the Domain name (it appears from the evidence of record that Respondent registered the Domain Name to divert customers seeking Complainant to Respondent’s websites where Respondent attempts to sell those customers goods and services in direct competition with Complainant’s goods and services).
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the Respondent to rebut the Complainant’s evidence. In this case, because Respondent has failed to file a Response, the Panel finds that the Complainant’s facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”
The Panel concludes, that Respondent has registered and used the Domain Name in bad faith. It has been established the Domain Name is identical to Complainant’s WIRELESS MATRIX mark and Respondent has no rights or legitimate interests in the Domain Name.
At least six years after Complainant began using the Mark, Respondent registered the Domain Name on October 31, 2006, for use on a website selling competitive products and services. Respondent uses the domain names , , and , which reflect Respondent’s trade name and do not infringe Complainant’s Mark, yet Respondent registered and is using a domain name () that is identical to Complainant’s Mark.
The Panel further finds that by registering and using the Domain Name for a website that sells products and services competing with Complainant’s products and services, Respondent has run afoul of paragraphs 4(b)(iii) and (iv) of the Policy.
In this proceeding, the Panel visited Respondent’s site for information regarding how Respondent is using the Domain Name. See WIPO Overview, paragraph 4.5. The Panel found further proof that Respondent registered and may be using the Domain Name in bad faith by virtue of the fact that buried as a meta-tag on at least one page of Respondent’s website is Complainant’s WIRELESS MATRIX mark. Thus, it is apparent Respondent not only knows of Complainant (and indeed knew of Complainant before registering the Domain Name) but, also, Respondent is using the Domain Name for commercial purposes that contravene the intent of the Policy.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Harrie R. Samaras
Sole Panelist
Dated: September 8, 2008
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