WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Clearwire Legacy LLC v. DomainsByP/The Christian Party Case No. D2010-0828 1. The Parties
The Complainant is Clearwire Legacy LLC of Washington, United States of America, represented by Latimer IP LAW LP, United States of America.
The Respondent is DomainsByP/The Christian Party of Scottsdale, Arizona, United States of America and Dallas, Texas, United States of America, represented internally. 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 May 21, 2010. On May 21, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On May 24, 2010, GoD, Inc. 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 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2010. The Response was filed with the Center on June 21, 2010.
The Complainant submitted a “Reply” to the Response on June 25, 2010.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 30, 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 is a Delaware Limited Liability Company headquartered in Kirkland, Washington. According to the Complainant's websites, the Complainant is an operating subsidiary of Clearwire Corporation, a publicly traded company listed on the NASDAQ stock exchange. The Complainant offers wireless Internet access services in the United States and Europe using innovative technologies such as WiMAX (wireless microwave access).
The Complainant holds trademark registrations in the United States and other countries for marks comprised of the word “clear” combined with other English words descriptive of the Complainant's business. These include the following marks registered in the United States:
MARK
US REGISTRATION NO.
REGISTRATION DATE
CLEARWIRE
2741551
July 29, 2003
CLEARWIRE (words and design)
2964098
June 28, 2005
CLEARPREMIUM
3055305
Jan. 31, 2006
CLEARCLASSIC
3055306
Jan. 31, 2006
CLEARBUSINESS
3055307
Jan. 31, 2006
CLEARVALUE
3055308
Jan. 31, 2006
CLEARWIRE
3130740
Aug. 15, 2006
CLEARPLUGS
3345228
Nov. 7, 2007
CLEARWIFI
3506302
Sep. 23, 2008
CLEARENTERTAINMENT
3604333
Apr. 7, 2009
CLEARMUSIC
3604332
Apr. 7, 2009
CLEARMOBILE
3604334
Apr 7, 2009
CLEARTV
3604331
Apr. 7, 2009
The Complainant also has pending applications with the United States Patent and Trademark Office to register design marks, some of them incorporating the word “clear”, as trademarks.
The Complainant operates websites “” and “”.
The Domain Name was registered on October 20, 2009, using the registrar's domain privacy service. Following notice of this proceeding, the registrar identified the registrant as the Respondent The Christian Party, with Dion Debouver listed as the administrative and technical contact. Mr. DeBouver submitted a Response in the name of “The Christian Party / Dion DeBouver.”
The Respondent privacy service, DomainsByP, claims no interest in the Domain Name, and there is no indication in the record that the Respondent “The Christian Party” is a legal entity. Consequently, “Respondent” refers hereafter collectively to Mr. DeBouver and “The Christian Party.”
According to the Response, the Respondent is an independent contractor working with a retailer of the Complainant's services in the Dallas metropolitan area named “Clear for Dallas”, operating a website at “”. That domain name does not currently resolve to an active website, and there are no archived pages associated with that domain name available through the Internet Archive's Wayback Machine. Again according to the Response, Clear for Dallas is an authorized reseller that receives commissions from the Complainant for signing up new customers for the Complainant's wireless Internet services. Those commissions are then shared with the independent contractors, such as the Respondent, who make the sales. The Respondent emphasizes its cooperation with Clear for Dallas and implies that Clear for Dallas consented or acquiesced in the Respondent's use of the Domain Name for a website promoting the Complainant's services. The Respondent does not furnish supporting evidence but instead identifies Rudy Fidel as the head of Clear for Dallas, a venture owned by Lefar, LLC, and suggests that Mr. Fidel can be contacted for confirmation.
It is undisputed that the Respondent used the Domain Name for a website that featured one of the Complainant's design marks, which is the subject of a pending United States trademark registration application, and advertised the Complainant's Internet access services in the Dallas area. The website was headed “Clear for Dallas” and did not identify the Respondent. It is also undisputed that much of the content on the website was copied from the Complainant's websites. The contact telephone number and email address displayed on the website were those of the Respondent and not of either Clear for Dallas or the Complainant.
The Complainant's Reply attaches a June 25, 2010 email to the Respondent from Rudy Fidel, who was identified in the Response as the person “in charge of Clear for Dallas” and who is listed in the WhoIs database as the registrant of the domain name . Mr. Fidel identifies himself as general manager of “Wimax for Dallas” and refers to Lefar as his company. Mr. Fidel's email states that the Respondent has no authority to use “Clearwire's intellectual property” on any website that the Respondent develops. The email further states that Mr. Fidel and his company have never authorized the Respondent to secure domain names incorporating the Complainant's marks.
The Domain Name currently resolves to a page with the message, “This Domain is parked pending resolution of a WIPO dispute.” 5. Parties' Contentions A. Complainant
The Complainant argues that the Domain Name is confusingly similar to its CLEAR marks and that the Respondent has no rights or legitimate interests in the Domain Name, never having been authorized to use the Complainant's marks for such a purpose.
The Complainant contends that the Respondent registered and used the Domain Name in bad faith, to divert potential customers from contacting the Complainant directly, to disrupt the Complainant's business, and to sell the Domain Name to the Complainant or a competitor for an excessive price. B. Respondent
The Respondent argues that the Domain Name was chosen to resemble the name of the Complainant's reseller Clear for Dallas, with which the Respondent is associated, and not the Complainant's marks.
The Respondent contends that it registered and used the Domain Name in good faith in furtherance of its activities as an independent contractor for Clear for Dallas, activities that only resulted in increased sales for the Complainant.
The Respondent also suggests that it would be appropriate for the Panel to make a finding of Reverse Domain Name Hijacking in this case. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the 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.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Supplemental Filing
The Policy and Rules promote expeditious proceedings and do not expressly contemplate additional filings other than at the direction of the Panel. The Complainant's brief Reply simply furnishes a copy of a recent email from Mr. Fidel, the individual identified in the Response as authorizing the Respondent's activities on behalf of Clear for Dallas, to refute the implication that this reseller authorized the Respondent to use the Complainant's design mark and content on the Respondent's website. As such, the Panel accepts the Reply as a part of the record in this proceeding. B. Identical or Confusingly Similar
The Complainant holds numerous registered trademarks beginning with the word “clear” , and it uses design marks (pending registration) incorporating the word “clear” with a figurative element.
“Clear” is a common English word, but the Complainant has trademarked many combinations of “clear” with words or phrases relevant to its business. The addition, in the Domain Name, of the symbol “4” (often used to represent its sound-alike, the English preposition “for”) and the city name “Dallas” does not remove the likelihood of confusion with the Complainant's CLEAR marks, since the Complainant advertises and offers services in the Dallas metropolitan area. The Respondent acknowledges selecting the Domain Name for its apparent similarity to the name of one of the Complainant's resellers in the Dallas area, a name that was evidently designed to refer to the Complainant's CLEAR services.
The Domain Name is similar to the Complainant's CLEAR marks in appearance, sound, and meaning. The Panel finds that it is confusingly similar to the Complainant's marks for purposes of the first element of the Policy. C. Rights or Legitimate Interests
It is undisputed that the Complainant did not authorize the Respondent to register and use the Domain Name. The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Names, including the following:
“(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.”
The Respondent refers to “fair use” but clearly made commercial use of the Domain Name. The Response emphasizes the Respondent's legitimate interest in selling the Complainant's services for sales commissions shared by the Complainant's authorized local reseller, which used the name Clear for Dallas.
It is undisputed that there was no direct contractual relationship between the Complainant and the Respondent and that the Complainant never authorized the Respondent to use a domain name incorporating the Complainant's marks. There is no evidence in the record that the reseller Clear for Dallas, with whom the Respondent claims an independent contractor relationship, was authorized to grant such permission to the Respondent, and the reseller's manager denies ever doing so.
Some UDRP panels have recognized a reseller's right to make nominative use of a supplier's mark in a domain name, even without authorization. See, e.g., Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447. This right is always viewed as conditional, however, with the decisions typically citing Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, which enunciated conditions based on the application of trademark law principles to the domain name context. One of those conditions is that “the site must accurately disclose the respondent's relationship with the trademark owner.”
The Respondent clearly failed to do so here. The website formerly associated with the Domain Name did not even identity the Respondent. The website was headed with the name used by a reseller of the Complainant's services but did not identify the responsible company, its role as a reseller, or the Respondent's relationship to it. The content of the website was largely copied from the Complainant's websites. Far from disclosing the Respondent's relationship, if any, with the Complainant, the website associated with the Domain Name misleadingly reinforced the impression that it was operated or sponsored by the Complainant. This is not a fair, nominative use of a Domain Name that is confusingly similar to the Complainant's marks.
The Panel finds that the second element of the Policy has been established. D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name:
“(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 web site 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 web site or location or of a product or service on your web site or location.”
The Complaint alludes to all of these. The Complaint adds that bad faith is evident in the Respondent's use of a domain privacy registration service and the fact that the Respondent owns at least one other domain name, , that is arguably in bad taste and could somehow reflect poorly on the Complainant's image.
Most of these allegations are not well founded. There is no evidence that the Respondent attempted to sell the Domain Name to the Complainant or a competitor, much less that this was the primary purpose for registering the Domain Name, which the Respondent has used for its business in trying to generate sales commissions by selling the Complainant's services on behalf of a reseller. The Complainant has no shortage of “CLEAR” domain names, and the registration of the Domain Name did not prevent the Complainant from obtaining more directly relevant domain names corresponding to its marks. The Respondent's income seems to have depended on promoting rather than disrupting the Complainant's business. The use of a domain privacy service is not itself sufficient to establish bad faith, and in this case it did not prevent the Complainant (or the Panel) from readily determining the Respondent's identity. And other domain names registered by the Respondent have no apparent relevance, as they were not mentioned or linked on the website associated with the Domain Name.
Paragraph 4(b)(iv) of the Policy is the relevant example of bad faith: the record supports the inference that the Respondent used a confusingly similar Domain Name to mislead Internet users concerning source or affiliation for commercial gain, in this instance in the form of sales commissions.
The Respondent, as a contractor for one of the Complainant's resellers, was undeniably aware of the Complainant's CLEAR marks. By the Respondent's own account, the Respondent selected the Domain Name as a reference to a reseller's name, which itself incorporated a reference to the CLEAR marks. The Respondent states its “understanding” (without evidentiary support) that the Complainant allowed resellers to publish informational but not transactional websites, and the Respondent contends that its website was designed to conform to this policy. But the Respondent has not established any authority from the Complainant, directly or indirectly through one of the Complainant's resellers with authority to grant such permission, to register a domain name confusingly similar to the Complainant's CLEAR marks and use it for a website copying the Complainant's website content and directing visitors to the Respondent.
Further, as discussed above in connection with the second element of the Policy, this cannot be characterized as a fair, nominative use of the CLEAR marks by an unauthorized reseller. The Respondent did not identify itself or its relationship with the Complainant, and the website content reinforced the misleading impression that the website was operated or sponsored by the Complainant.
The Panel concludes, on the available record, that the Domain Name was registered and used in bad faith within the meaning of the Policy. E. Reverse Domain Name Hijacking
Given the Panel's conclusions in favor of the Complainant, the Respondent's request for a finding of Reverse Domain Name Hijacking under the Rules, paragraph 15(e), is denied. 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.
W. Scott Blackmer
Sole Panelist
Dated: July 17, 2010
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