WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION WirelessUSA Inc. v. DNS Support Case No. D2009-0731 1. The Parties
The Complainant is WirelessUSA Inc. of Maryland Heights, Missouri, United States of America, represented by Lewis, Rice & Fingersh, L.C., United States of America.
The Respondent is DNS Support of Chelsea, London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2009. On June 4, 2009, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 4, 2009, eNom 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” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced on June 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2009. The Response was filed with the Center on June 30, 2009, but only in electronic form.
The Center appointed Sir Ian Barker as the sole panelist in this matter on July 10, 2009. 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
The Complainant has been a provider of communication services in the Midwest region of the United States for over 45 years. It is a retailer and distributor of radio and communications products.
Since 1966, it has been using the name and service mark WIRELESSUSA to market and sell its communications services. It has United States patents for WIRELESSUSA – the first filing was in 1997 and the first grant in 1999.
The Complainant owns and operates a number of websites using the word “Wireless USA”, such as , , and .
The Respondent registered the disputed domain name on June 6, 2003.
The Respondent has been given no rights by the Complainant in respect to the disputed domain name or any of its trademarks.
The disputed domain names resolves on a click-through basis to a website offering advertising and sponsored links for various goods, including products competing with those offered by the Complainant.
On January 26, 2006, attorneys acting for the Complainant sent to the Respondent a ‘cease and desist' letter which produced a Response from it along the lines of the present Response. No action was taken by the Complainant until this current Complaint was launched in June 2009. 5. Parties' Contentions A. Complainant
The disputed domain name is identical to the trademarks in which the Complainant has rights.
The Complainant gave no rights to use its trademark in a domain name to the Respondent which has not succeeded in proving any of the matters under Paragraph 4(c) of the Policy which might give it rights or legitimate interests in the disputed domain name.
The Respondent registered and is using the disputed domain name in bad faith. The Respondent should have been aware of the Complainant's service marks and company name when it registered the disputed domain name in 2003. It should have searched the United States Patent & Trade Mark Office database before registering the disputed domain name and thus acquired constructive notice of the Complainant's registered marks.
The Respondent's use of the disputed domain name is likely to deceive the public as to the source, sponsorship, affiliation or endorsement of the Respondent's site it creates a likelihood of confusion with the Complainant's proprietary name and its service marks. With knowledge of the Complainant's rights in its well-known name and marks, the Respondent registered the disputed domain name in order, purportedly, to post content related to the communications industry. The website content relates to the communications industry. The Respondent must have been aware of the Complainant's marks and its business at the date of registration of the disputed domain name.
The Complainant cited the case of Council of Better Business Bureausm Inc. v. Domain Deluxe,WIPO Case No. D2005-0614. In that case the Panel found that the respondent had been aware of the complainant's mark because it had registered domain names in connection with content related to the complainant's business.
The respondent there registered the disputed domain name in order to attract for commercial gain internet users to its website by creating a likelihood of confusion with the complainant's marks as to the source, sponsorship, affiliation or endorsement of the respondent's site.
Because of the ‘click-through' arrangement, the present Respondent is receiving income from use of the Complainant's trademark in the disputed domain name. Internet users diverted to the Respondent's web pages may suppose that the Respondent is in some way connected with the Complainant, thus damaging the Complainant's business. B. Respondent
The Respondent first registered the disputed domain name in June 2003, via eNoms Club Drop Auction Service. When it operates in auctions, it uses a series of filters to identify domains that provide development opportunity. In this case, the filter was “ends in usa”. The intent was to secure the domain name so at a later time it might develop a Telecom shopping site and provide a comparison of wireless services in the USA.
Other domains that have been registered by the Respondent through a similar methodology include , and . Each of these domains was registered with the same thought in mind – to secure a domain that was suitable to market various Telecom and utility services in the USA and other countries.
At the time of registering the disputed domain name, the Complainant had not registered its domain names. The Respondent had never heard of a company that sold radios and radio equipment in St Louis, Missouri, USA.
The Respondent registered the disputed domain name solely for the option to develop a site. It was parked to earn income to help offset registration fees. It received the Complainant's ‘cease and desist' letter in July 2006 and it responded along the lines of its present Response. It heard nothing more from the Complainant until it received the Complaint. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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. A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant's registered marks. Therefore, the Complainant succeeds in the first limb of Paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights to use its marks in a domain name. Therefore, the onus shifts to the Respondent to show that it comes within one of the provisions of Paragraph 4(c) of the Policy.
The only possibly applicable provision in the circumstances of the present case is Para. 4(c)(i) whereby the Respondent has to show that before any notice of a dispute, the Respondent used the disputed domain name in connection with a bona fide offering of goods or services. Consideration of this matter must in this case be made alongside consideration of whether the registration of the disputed domain name was made in bad faith. If it were, then the defence would fail under Para. 4(c) (i). If it were not, the present use of the domain name may in any event militate against a finding in Respondent's favour under the second element of the Policy. See for example Trade Me Limited v. Vertical Axixs Inc,WIPO Case No. D2009-0093. C. Registered and Used in Bad Faith
This is yet another case where a disputed domain name was registered long before the filing of the Complaint. Whilst under the Policy there is no time-limit after the registration of a domain name for filing a complaint, the longer the time between registration and complaint, the more difficult it is to infer bad faith registration.
No explanation has been given by the Complainant for the delay in filing the Complaint, and nor was there any explanation as to why it took no action in 2006 after it had issued the ‘cease and desist' letter which had attracted a reply from the Respondent. The Complainant did not mention its ‘cease and desist' letter in its Complaint. It was produced by the Respondent.
The Complainant asks the Panel to infer registration in bad faith which has to be viewed separately from use in bad faith. There is no doubt there is bad faith use since at least since 2006, when the Respondent was made aware of the Complainant's marks. Yet it continued to operate a click-through website which advertised for sale products in competition with those of the Complainant.
The Complainant asks the Panel to infer bad faith registration, first because its trademarks had been on the US Patent and Trade Mark Register, which is available to be searched. There are some WIPO decisions which indicate that respondents in the United States should have presumptive notice of domain names which might infringe trade marks through the simple precaution of searching the US PTO database. The Respondent is not resident in the United States. Nor is there any evidence that the Complainant's outreach extends to the United Kingdom where the Respondent is situated.
This Panel is not aware of any case where constructive knowledge of a United States registered trademark can be used as evidence by a respondent in the United Kingdom. The Better Business Bureaus case does not help the Complainant. There, the Panel ruled against the respondent which had not filed a response but which had registered a number of domain names at variance to the Better Business Bureaus mark. Some of these registrations were in the nature of typosquatting where the variances on Better Business Bureaus were the addition or deletion of letters. Moreover, that complainant's marks had been registered, not only in the United States but in other countries, including the European Union and the United Kingdom.
The Overview of WIPO Panel Views on Selected UDRP Questions, at paragraph 3.4, states that most panels have declined to introduce the concept of constructive notice into the UDRP. However, where the Complainant has had a United States registered trademark and the Respondent was located in the United States, this concept has been used in some cases to support the finding of registration and/or use in bad faith.
In Alberto-Culver Coy v. Printpal Singh Channa,WIPO Case No. D2002-0757, the Panel rejected the idea that constructive notice was generated upon a trademark registration. In that case, the respondent was registered in England, the trademark was registered in the United States. On the facts of that case, the Panel found there was nothing to indicate that the respondent was ever aware of the complainant's mark. The Panel also rejected reliance on constructive notice because of passive holding. The domain name was described as the concatenation of two generic English words and, therefore, the “passive holding” principle did not apply.
In the present case, the Respondent has stated that it did not know of the Complainant's mark at the time it registered the disputed domain name six years ago and that it had no knowledge of the Complainant, which operates in the Midwest region of the United States. The Panel does not find this to be an implausible claim in the present circumstances.
Since the onus of proof is on the Complainant to show that the Respondent registered the disputed domain name in bad faith, the Complainant has not proved this. The various matters mentioned in the Complaint and summarised above support the notion of continued bad faith use but, in the Panel's view, are not enough to overcome the burden of showing that, six years ago, at a time when the Complainant did not have the various other domain names, somebody in the United Kingdom would (or should) necessarily have known that it had trademarks. While the Respondent is not assisted by having had previous bad faith findings made against it in prior UDRP decisions, the onus is on the Complainant to prove its case against the Respondent in the present matter. That task is made more difficult by the nature of the domain name at issue.
As in the Alberto-Culver case (supra), the Complainant's trademarks consist of two generic words ‘wireless' and ‘usa'. Other cases noted by the Complainant can be distinguished. For example, in Humana Inc. v. Domain Deluxe WIPO Case No. D2005-0231, the disputed domain name was . The Panel held that the coupling of the Complainant's name with the word ‘healthcare' which was the Complainant's business, would not have occurred to anyone unaware of the Complainant and the nature of its business. In the present case, the trademark is two generic words which could have applied to any number of radio businesses in the United States. The decision Lockton Companies, Inc. v. chabbewalweb,WIPO Case No. D2005-1230 where the disputed domain name was is to similar effect.
Accordingly, the Panel finds that the Complainant has failed also to prove bad faith registration. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Sir Ian Barker
Sole Panelist
Dated: July 24, 2009
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