WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Clearwire Legacy LLC v. Nexbox / DomainsByP Case No. D2010-0579 1. The Parties
The Complainant is Clearwire Legacy LLC of Kirkland, Washington, United States of America, represented by Latimer & Mayberry IP Law LP, United States of America.
The Respondent is Nexbox of Lawrenceville, Georgia, United States of America and DomainsByP of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2010. On April 16, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 23, 2010, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 23, 2010 providing the registrant and contact information disclosed by the Registrar, to which the Complainant replied to the Center on April 23, 2010, confirming that it had already reflected the information disclosed by the Registrar in its Complaint. 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 April 28, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 19, 2010.
The Center appointed Michelle Brownlee as the sole panelist in this matter on May 25, 2010. 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 owns United States Registration No. 2,741,551 for the mark CLEARWIRE in connection with providing high speed access to area networks in a global computer information network, and owns other registrations or pending applications in various other jurisdictions throughout the world for the mark CLEARWIRE in plain text and stylized forms.1 The Complainant also owns United States registrations for a number of marks that include the term CLEAR in connection with telecommunications services relating to Internet access. These marks include CLEARENTERTAINMENT, CLEARPREMIUM, CLEARTV, CLEARBUSINESS, CLEARCLASSIC and CLEARWIFI. The Complainant has also filed applications in the United States for the marks CLEAR and CLEAR and design in connection with telecommunications and other services. Those applications were filed in August and November of 2008, respectively. The Domain Name was registered on October 17, 2009. 5. Parties' Contentions A. Complainant
The Complainant uses the mark CLEAR in connection with high-speed Internet services for consumers and businesses. The Complainant provides services that utilize WiMAX technology under the brand CLEAR in two markets. The CLEAR brand is a key player in the developing WiMAX market, and a Wikipedia entry has even mentioned the Complainant's use of the CLEAR trademark in connection with such services.
The Complainant contends that the Domain Name is confusingly similar to its CLEAR trademark because it pairs the non-distinctive terms “internet” and “city” together with the Complainant's trademark. The Complainant submits that the Respondent was not making any bona fide use of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith. The web site that was posted at one time at the Domain Name used copyrighted materials from the Complainant's web site without the Complainant's authorization and advertised that it was an authorized dealer for the Complainant, but the Complainant does not have any record of having authorized the Respondent as a dealer. The Complainant further alleges that the Respondent owns other web sites that appear likely to be scams, as they promise that they will allow people to make money and, in one case, require users to pay a joining fee. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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 Complainant contends that the Domain Name is confusingly similar to its CLEAR trademark. However, little evidence was presented to establish that the Complainant has rights in the trademark CLEAR. Much evidence was presented regarding registrations of a number of marks that included the term CLEAR, but there were no registrations of the term CLEAR by itself. The Complaint did mention that the Complainant used the CLEAR trademark in connection with WiMAX technology services, but did not state when such use commenced, so it is difficult to determine whether the Complainant had any common law rights in the CLEAR trademark at the time the Domain Name was registered. The Complaint mentioned that the Complainant operates a web site at the domain name and showed a printout from the site that used the CLEAR mark, and, based on the information annexed to the Complaint, the Panel was able to determine that use of the CLEAR mark was begun on or about January 6, 2009, when the Complainant launched its CLEAR services in Portland, Oregon. Further, the Complainant's family of trademarks that pair the word CLEAR with descriptive or generic terms (e.g., CLEARENTERTAINMENT, CLEARBUSINESS, CLEARWIFI, etc.) also establish by a preponderance of the evidence that the Complainant has common law rights in the term CLEAR in connection with Internet telecommunications services. Further, the Panel notes that previous UDRP cases have recognized the Complainant's rights in the CLEAR family of marks, e.g. Clearwire Legacy, LLC v. Leon Ganesh, D2010-0148.
There are a great deal of UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022 ( and confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer,WIPO Case No. D2001-0032 ( and confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the CLEAR trademark with the less distinctive terms “internet” and “city,” is confusingly similar to the Complainant's CLEAR trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
The Respondent has not presented evidence, or in any other way refuted the Complainant's prima facie case in this regard, that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name. The evidence in the record demonstrates that the Respondent has posted misleading information on the web site associated with the Domain Name, suggesting a false affiliation with the Complainant. In the Panels view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Domain Name was registered after the Complainant's announcement of the launch of its CLEAR WiMAX services. The Respondent has apparently at one time displayed the Complainant's copyrighted content on the Respondent's web site, together with a false claim of affiliation with the Complainant. There is no question that the Respondent's use of the Domain Name was an intentional attempt to divert Internet traffic to the Respondent's site by creating a likelihood of confusion with the Complainant's trademark. 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 disputed Domain Name be transferred to the Complainant.
Michelle Brownlee
Sole Panelist
Dated: June 8, 2010
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