Complainant is Clearwire Legacy LLC. of Washington, United States of America, represented by MH2 Technology Law Group LLP, United States of America.
Respondent is Ian Vago of Oregon, United States of America. 2. The Domain Names and Registrars
The disputed domain names , , , and (the “Disputed Domain Names”) are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2010. On July 1, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Names. On July 1, 2010 GoD, Inc., transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 6, 2010.
The Center appointed Richard W. Page as the sole panelist in this matter on August 18, 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
Complainant is the owner of approximately 50 trademark registrations and applications of the mark CLEAR and marks which include the CLEAR and CLEARWIRE marks (hereinafter the “CLEAR Marks”). In addition, Complainant owns the domain names , , and other CLEAR-based domain names. These trademark registrations and applications cover many countries around the world, including the United States ( the “United States” or “USA) (where Respondent is domiciled), the European Union, the Peoples Republic of China, Norway and Japan.
Complainant adopted the unique identifier CLEAR in connection with a robust suite of advanced high-speed Internet services to consumers and businesses. As part of a multi-year network build-out plan, Complainant’s CLEAR services and related goods will be available in major metropolitan areas across the United States and bring together an unprecedented combination of Internet speed and mobility. Complainant’s open all-IP network, combined with significant spectrum holdings, provides unmatched network capacity to deliver next generation broadband access. The innovation technology has attracted a number of strategic investor including Intel Capital, Comcast, Sprint, Google, Time Warner Cable and Bright House networks. Complainant currently provides CLEAR service, utilizing WiMAX technology, in two markets and provides pre –WiMAX communication services in 50 markets across the United States and Europe.
The Disputed Domain Names were all registered in July 2009. 5. Parties’ Contentions A. Complainant
By virtue of its registration for CLEAR, Complainant has a constructive use date of August 21, 2008 throughout the United States. Actual use of CLEAR commenced in the same year. Complainant first registered the CLEAR Marks in 2003 and has common law rights in the marks dating back to 1999. The CLEAR family of marks had been in development since 2005. All of these rights predate the registration date of the Disputed Domain Names.
Complainant has spent considerable amounts of money, time and effort in securing, developing, promoting, advertising and protecting its CLEAR Marks. As a result of Complainant’s extensive exposure, advertising, promotions, and singular success, the public associates the CLEAR Marks with Complainant. Furthermore, Complainant’s CLEAR Marks are a key player in the developing WiMAX market. In fact, the CLEAR Marks are even identified in Wikipedia as the brand of Complainant.
Complainant has been known in the Internet field under the CLEARWIRE moniker and trade name since at lease as early as 2004. In 2004, it launched its wireless broadband Internet service under the CLEARWIRE name. Since that time, it has been through many iterations and the CLEARWIRE and CLEAR trademarks have become synonymous with high quality, high speed wireless internet services.
Complainant has actively protected its rights in its CLEAR Marks not only by securing and maintaining trademark registrations, but also by routinely monitoring for impermissible uses of its marks. Complainant also controls the use of its CLEAR Marks in its agreement with third parties. Further Complainant has authorized cease and desist letter to companies and individuals who are wrongfully using any CLEAR Marks and has actively enforced its rights against those who continue to infringe Complainant’s rights. Thus it is clear that Complainant has strong, protectable rights in its CLEAR Marks.
Respondent’s Disputed Domain Names ; ; ; ; and (disregarding the gTLDs) combine the terms CLEARWIRE and CLEAR (which are identical to Complainant’s CLEARWIRE and CLEAR Marks with a geographical location abbreviation (i.e., USA) and /or descriptive generic wording (i.e., 4free, rates, go and my---network) which does nothing to distinguish the Disputed Domain Names from Complainant’s CLEAR Marks. Clearly, the Disputed Domain Names imply that Respondent ‘s sites are Complainant’s sites, where interested consumers can get information about the services of Complainant.
Complainant argues that it is now well established in UDRP precedent, that a minor variation, such as an additional short letter or number groups or even common, generic or highly descriptive words, or country names to a mark, is usually insufficient in and of itself, when used in forming a domain name that results from modifying the mark, to confer requisite and sufficient distinctiveness to that name to avoid user confusion.
It is clear that the Disputed Domain Names are confusingly similar to CLEAR Marks in which Complainant has rights.
Respondent has registered the Dispute Domain Names intending to either: (1) profit from the sale of the Disputed Domain Names by selling them to Complainant; (2) profit from the sale of the Disputed Domain Names by selling the Disputed Domain Names to a competitor of Complainant so that the competitor could divert sales; (3) develop his own website using Complainant’s trademark, with the intent to divert customers away from Complainant, cause confusion in the market place or otherwise trade on the good will and name of Complainant; and/or (4) prevent Complainant from registering these domain names for its own use in its business.
Respondent registered the Disputed Domain Names knowing that it is not the lawful owner of the CLEAR Marks upon which the Disputed Domain Names are based. There is no evidence that Respondent registered the Disputed Domain Names for a bona fide reason.
Respondent is not authorized to sell Complainant’s services via a website. At no time was Respondent entitled to secure, use or register any domain names that included Complainant’s CLEAR Marks. Thus registration of the Disputed Domain Names was improper.
Presently, the content on the website at Respondent’s ; ; ; ; and domain names are monetized parking sites wherein companies listed at the site pay a fee for any “click through” traffic it receives from the site. Since Complainant’s sites are among those listed, Complainant is being charged to get the traffic that was originally intended for it anyway.
Respondent’s websites divert Internet users to the websites of others (likely to pay), or redirect targets to Complainant (for which Complainant must pay) and/or otherwise engage in prohibited activity. This type of use of domain name registrations constitutes the type of conduct that court and administrative panels have repeatedly condemned.
Websites such as Respondent’s have become known as “paid link farm services” and “ monetized parking pages.” Such sites are a way for domain name registrants and/or registrars to profit from their illicit activity and to do so with virtually no effort. Simply, such sites provide domain name registrants with “click through” fees or other fees calculated in various ways. The links include links to competitive websites and that it is clear that domain name registrant is illicitly profiting from the goodwill associated with Complainant’s CLEAR Marks as well as actively diverting a Complainant’s potential customer to the site of another. Such activity by Respondent clearly indicates bad faith under the Policy.
Complainant further notes that the fact that the links available on the site are competitive products is proof that Respondent is aware of Complainant and the nature of its goods and services. The foregoing actions of Respondent disrupt Complainant’s normal business and by so doing potentially commercially benefit Respondent and are clearly to the ultimate detriment of Complainant. These actions themselves alone evidence bad faith registration and use.
In the instant matter, the only possible conclusion is that Respondent registered, and is using and holding the Disputed Domain Names, for some bad faith reason (e.g., most likely to divert and catch Internet users looking for Complainant and/or Complainant’s services and/or products). There is no credible reason why Respondent would register various versions of Complainant’s CLEAR Marks as domain names that are so closely associated with Complainant’s famous CLEAR Marks.
In light of the above, it is inescapable that Respondent was aware of Complainant’s rights in CLEAR Marks at the time Respondent registered it Disputed Domain Names and pursued the registration contrary to Complainant’s interest and in circumvention of Complainant’s rights. Thus Respondent submitted its Disputed Domain Name registrations contrary to Complainant’s interests and in circumvention of Complainant’s rights. Thus, Respondent submitted its Disputed Domain Names registrations with full knowledge that the Disputed Domain Names infringed on the valuable intellectual property rights of another. These actions were in violation of Complainant’s trademarks and domain name rights of another. These actions were in violation of Complainant’s trademark and domain name registrations also constituted bad faith registration on the part of Respondent. These actions support Complainants claim that the Disputed Domain Names should be transferred to Complainant. Further, when a trademark is famous, the very use of the mark in the form of a domain name by a third party suggests “bad faith.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie,WIPO Case No. D2000-1772 A. Identical or Confusingly Similar
Complainant contends that it has numerous registrations of the CLEAR Marks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the CLEAR Marks. 15 U.S.C. § 1115. Complainant further contends that the CLEAR Marks are famous.
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. It is the Panel's belief that Respondent, by not responding, has not met its burden and Complainant has demonstrated protectable rights for purposes of this proceeding.
Complainant further contends that the Disputed Domain Names are identical with and confusingly similar to the CLEAR Marks pursuant to the Policy paragraph 4(a)(i).
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are legally identical). The addition of other descriptive or generic terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.
The Panel notes that Respondent’s Disputed Domain Names ; ; ; ; and (disregarding the gTLDs) combine the terms CLEARWIRE and CLEAR (which are identical to Complainant’s CLEARWIRE and CLEAR trademarks with a geographical location abbreviation (i.e., USA) and/or descriptive generic wording (i.e., 4free, rates, go and my---network) which does nothing to distinguish the Disputed Domain Names from Complainant’s Marks.
Respondent has not contested the assertions by Complainant that the Disputed Domain Names are confusingly similar to the trademark
Therefore, the Panel finds that the Disputed Domain Names are confusingly similar to the CLEAR Marks pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Names. Once a Complainant establishes a prima facie showing that e.g., none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.
Complainant comes forward with allegations that Respondent has registered the Disputed Domain Names intending to either: (1) profit from the sale of the Disputed Domain Names by selling them to Complainant; (2) profit from the sale of the Disputed Domain Names by selling the Disputed Domain Names to a competitor of Complainant so that the competitor could divert sales; (3) develop his own website using Complainant’s trademark, with the intent to divert customers away from Complainant, cause confusion in the market place or otherwise trade on the good will and name of Complainant; and/or (4) prevent Complainant from registering these domain names for its own use in its business.
Complainant alleges that Respondent registered the Disputed Domain Names knowing that it is not the lawful owner of the CLEAR Marks upon which the Disputed Domain Names are based. There is no evidence that Respondent registered the Disputed Domain Names for any bona fide reason.
Respondent is not authorized to sell Complainant’s services via a website. At no time was Respondent entitled to secure, use or register any domain names that included Complainant’s CLEAR Marks. Thus registration of the Disputed Domain Names for the purposes herein described was improper.
Presently, the content on Respondent’s , , , , and websites show the sites are monetized parking sites wherein companies listed at the site pay a fee for any “click through” traffic it receives from the site. Since Complainant’s sites are among those listed, Complainant is being charged to get the traffic that was originally intended for it anyway.
Respondent’s websites divert Internet users to the websites of others (likely to pay), or redirect targets to Complainant (for which Complainant must pay) and/or otherwise engage in prohibited activity. This type of use of domain name registrations constitutes the type of conduct that court and administrative panels (including this one) have repeatedly condemned.
Websites such as Respondent’s have become known as “paid link farm services” and “monetized parking pages.” Such sites are a way for domain name registrants and/or registrars to profit from their illicit activity and to do so with virtually no effort. Simply, such sites provide domain name registrants with “click through” fees or other fees calculated in various ways. The links include links to competitive websites and that it is clear that domain name registrant is illicitly profiting from the goodwill associated with Complainant’s mark as well as actively diverting a Complainant’s potential customer to the site of another. Such activity by Respondent clearly indicates bad faith under the Policy.
There is nothing inherently wrong with the creation of a monetized parking site or payment on a pay-per-click basis. However under these circumstances it appears that Respondent has developed its own website using Complainant’s CLEAR Marks, with the intent to divert customers away from Complainant, cause confusion in the market place or otherwise trade on the goodwill and name of Complainant.
Respondent has chosen not to contest the allegations of Complainant. Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Names pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(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
Complainant contends that in the instant matter, the only possible conclusion is that Respondent registered, and is using and holding the Disputed Domain Names, for some bad faith reason (e.g., most likely to divert and catch Internet users looking for Complainant and/or Complainant’s services and/or products). There is no credible reason why Respondent would register various versions of Complainant’s CLEAR Marks as domain names that are so closely associated with Complainant’s famous CLEAR Marks.
Complainant further contends that in light of the above, it is inescapable that Respondent was aware of Complainant’s rights in CLEAR Marks at the time Respondent registered the Disputed Domain Names and pursued the registration contrary to Complainant’s interest and in circumvention of Complainant’s rights. Thus Respondent submitted its Disputed Domain Name registrations contrary to Complainant’s interests and in circumvention of Complainant’s rights. Thus, Respondent submitted its Disputed Domain Name registrations with full knowledge that the Disputed Domain Names infringed on the valuable intellectual property rights of another. These actions were in violation of Complainant’s trademarks and domain name rights of another. These actions were in violation of Complainant’s trademark and domain name registrations also constituted bad faith registration on the part of Respondent. These actions support Complainant’s claim that the Disputed Domain Names should be transferred to Complainant.
Respondent has chosen not to contest Complainant’s allegations.
Based upon the allegations as set forth in this proceeding, the Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(a)(iii). 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 names, , , , and be transferred to the Complainant.
Richard W. Page
Sole Panelist
Dated: September 2, 2010
Full & Egal Universal Law Academy