The Complainant is Clearwire Communications LLC of Kirkland, Washington, United States of America, represented by MH2 Technology Law Group LLP, United States of America.
The Respondent is Ira Kugelman of Woodmere, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with R. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2011. On January 5, 2011, the Center transmitted by email to R a request for registrar verification in connection with the disputed domain name. On January 6, 2011, R. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 January 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2011.
The Center appointed William Hamilton as the sole panelist in this matter on February 9, 2011. 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 provider of telecommunications services. The Complainant owns the domain names , and other CLEAR based domain names. The Complainant’s trademark registrations and applications cover many countries around the world, including the United States of America (where the Respondent is domiciled), the European Union, The People’s Republic of China, Norway and Japan.
In the United States, the Complainant obtained registration of the CLEARWIRE mark on August 15, 2006 with a first use in commerce reported as July 31,1999. The Complainant obtained a registration for the CLEAR mark for telecommunications services on April 27, 2010 with a first use reported as December 1, 2008. Between 2006 and 2010, the Complainant obtained United States registrations for the follow marks:
CLEAR and Design;
CLEAR and Design;
CLEAR365;
CLEARBUSINESS;
CLEARCLASSIC;
CLEARENTERTAINMENT;
CLEARMOBILE;
CLEARMUSIC;
CLEARPLUGS;
CLEARPREMIUM;
CLEAR Spot;
CLEARTV;
CLEARVALUE;
CLEARWIFI;
CLEARWIFI and Design;
CLEARWIRE and Design;
LET’S BE CLEAR.
The disputed domain name was registered on October 19, 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that the Respondent utilized the Complainant’s registered CLEAR mark (the “Mark”) in the disputed domain name. The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name merely appends highly descriptive or generic terms to the Mark. The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has not authorized the Respondent to utilize the Mark or the disputed domain name, and that the Respondent has not conducted any legitimate bona fide business under the disputed domain name or Mark. Finally, the Complainant asserts the Mark was registered and is being used in bad faith because the disputed domain name was not registered until after the Complainant had obtained a United States registration for the Mark. Moreover, the home page of the disputed domain name actually features the Complainant’s CLEAR mark and distinctive design. The Complainant asserts the disputed domain name was registered and is being used in bad faith to direct unsuspecting users to a web page that purports to offer the Complainant’s services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy articulates three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and to obtain relief. These elements are that:
(i) The respondent’s 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 respondent’s domain name has been registered and is being used in bad faith.
Each of these elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s Mark. The mere addition of highly descriptive or generic terms to another’s protected mark is not generally sufficient to avoid a likelihood of confusion. The term “4G” is a generic name for certain wireless network services and the term “direct” is a common and generic sales expression. Adding these generic terms as a suffix to the Mark to form the disputed domain name actually compounds the likelihood of confusion. Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh,WIPO Case No. D2004-0488; AmerCable Incorporated v. Edward Van Rossum,WIPO Case No. D2009-1292. The Panel finds that the Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant has asserted that the Complainant has not licensed nor authorized the Respondent to use the disputed domain name. “[I]t is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, the evidential onus shifts to the respondent to demonstrate that it has some right or legitimate interest.” Auto-C, LLC v. MustN,WIPO Case No. D2004-0025. The Respondent has failed to come forward with evidence showing rights or legitimate interests in the disputed domain name. Moreover, it is apparent that the Respondent has not conducted or has attempted to conduct a legitimate business under the disputed domain name which resolves to a home page that uses the Complainant’s actual Mark and distinctive design to confuse unsuspecting Internet users into believing that the Complainant is offering the advertised services. Champagne Lanson v. Development Services/MailP, Inc., WIPO Case No. D2006-0006; The Knot, Inc. v. In Knot we Trust LTD, WIPO Case No. D2006-0340; Brink’s Network, Inc. v. Asproductions,WIPO Case No. D2007-0353; Valet Waste, LLC v. Ellipse Communications,WIPO Case No. D2010-1415. The Panel finds that the Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The Panel has no difficulty in finding that the disputed domain name was registered and is being used in bad faith. The available evidence establishes a transparent scheme by the Respondent to misappropriate the Complainant’s registered Mark into the disputed domain name to confuse and lure unsuspecting Internet users to the Respondent’s website. The Complainant has argued the Respondent lacks authorization from the Complainant to use its Mark, to which the Respondent has not presented contrary evidence. In this regard, the Panel notes that the disputed domain name nevertheless resolves to a home page that claims it is operated by an “authorized retailer”. The Respondent’s website prominently features misappropriations of the CLEAR mark and distinctive CLEAR logo and offers services identical to the Complainant’s services, while deceiving Internet users into believing it is an authorized retailer’s website. The Panel finds that the Complainant has established the third element under paragraph 4(a) of the Policy. 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.
William F. Hamilton
Sole Panelist
Dated: February 25, 2011
Full & Egal Universal Law Academy