Complainant is Clearwire Communications LLC of Kirkland, Washington, United States of America, represented by MH2 Technology Law Group LLP, United States of America.
Respondent is Karen Stevens of Marina Del Rey, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2011. On July 14, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the Domain Name. On July 15, 2011, Melbourne IT Ltd. 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 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 12, 2011.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on August 23, 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
Complainant owns many trademark registrations and applications for the mark CLEAR and marks which include the CLEAR and CLEARWIRE marks (e.g., CLEAR and design, CLEARTV, CLEARMOBILE) in the United States where Respondent is domiciled as well as the European Union, China, Norway and Japan. The registrations include U.S. Registration No. 3,782,759 (registered on April 27, 2010) for “the CLEAR Mark” for “telecommunications services, namely, providing telecommunications connections to a global computer network; electronic, electric, and digital transmission of data, images, signals, messages and voice; providing high speed access to area networks and a global computer information network; telecommunication consultation; providing high speed access to computer and communication networks; providing email and instant messaging services.” The date of first use and first use in commerce of the CLEAR Mark is December 1, 2008.
Complainant also owns the domain names , and other “clear”-based domain names, including a number that include clear and a generic designation and/or geographical location.
Complainant adopted the CLEAR Mark to use in connection with a suite of high-speed Internet services for CLEARWIRE 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 U.S. Complainant currently provides CLEAR service, utilizing WiMAX technology, to over 1 million customers in 76 markets across the United States of America and Europe.
Complainant has spent considerable amounts of money, time and effort in securing, developing, promoting, advertising and protecting its CLEAR and CLEARWIRE marks. In fact the CLEAR Mark is even identified in Wikipedia as Complainant’s brand. Complainant has been known in the internet field under the CLEARWIRE moniker and trade name since at least as early as 2004. In 2004 Complainant launched its wireless broadband internet service under the CLEARWIRE name. Since that time, CLEARWIRE and CLEAR trademarks have become synonymous with high speed wired and wireless internet services, respectively.
Respondent registered the Domain Name on December 1, 2011. Respondent uses the Domain Name to resolve to a web site featuring Complainant’s CLEAR Mark and design mark/logo, offering Complainant’s services for sale, instructing users to call for products and services, including a phone number that does not belong to Complainant and encouraging users to provide contact information so an “expert” can call them. 5. Parties’ Contentions A. Complainant
Complainant requests that the Domain Name be transferred from Respondent to Complainant for the following reasons:
Disregarding the gTLD, the Domain Name combines the term “clear” (which is identical to Complainant’s CLEAR trademark) with the descriptive wording “4g” and “internet.” The designation “4g” refers to the speed of the internet connection and the word “internet” relates to the fact that the service offers a connection to the internet. Clearly, the Domain Name implies that Respondent’s site is Complainant’s site or was otherwise authorized by Complainant. Neither is true. The use of a generic term with the trademark of another has repeatedly been found to be in contravention of the domain name rules.
Respondent registered the Domain Name knowing that it is not the lawful owner of the trademark upon which it is based. There is no evidence that Respondent registered the Domain Name for any bona fide reason. Respondent is not authorized to sell Complainant’s services via a web site. At no time was Respondent entitled to secure, use or register any domain names that included Complainant’s trademarks. Thus, registration of the Domain Name was improper. Despite this, Respondent’s web site employs Complainant’s intellectual property, including its CLEAR trademark and CLEAR logo and seeks to encourage web site viewers to “contact us” and seeks contact information from interested viewers. However, the phone number listed is not Complainant’s and does not forward to a Clearwire-owned telephone number. It is unclear what Respondent does with the leads generated from the unauthorized site. Clearly, though, the site is either diverting customers looking for Complainant’s services and/or causing confusion in the marketplace and trades on the goodwill engendered by Complainant’s CLEAR trademark and/or some other impermissible use. There is no legitimate reason why Respondent has adopted the Domain Name.
In light of the above, it is inescapable that Respondent was aware of Complainant’s rights in CLEAR and CLEARWIRE at the time she registered the Domain Name and pursued the registration contrary to Complainant’s interests and in circumvention of Complainant’s rights. In fact, Respondent’s web site associated with the Domain Name indicates it is aware of the CLEAR branding. These actions were in violation of Complainant’s trademarks and domain name registrations and also constituted bad faith registration on the part of Respondent. 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.
A Google search for CLEARWIRE produced over 4,000,000 results, which is solid evidence of the fame of Complainant and Complainant’s CLEAR and CLEARWIRE marks. Respondent and its CLEARWIRE and CLEAR branded service offerings are the subject of numerous articles in various technology magazines. Respondent offers services in more than 25 states, to over 600,000 subscribers and has WiMax services available to over 50 million potential users. In the near future, Respondent expects to more than double this offering to more than 120 million potential users. Respondent actively promotes and markets its CLEARWIRE and CLEAR brands in each of its markets and thus, has its mark has achieved fame throughout the U.S. and is continuing to expand its reach. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent’s Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The Panel finds that Complainant satisfies this element by virtue of its United States trademark registration for the CLEAR Mark. As stated in the discussion following Question 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (“Does ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?”), the consensus view is: "If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights."
The Panel further finds that the Domain Name is confusingly similar to the CLEAR Mark. The addition of the generic top-level domain (gTLD) ".com" is not a distinguishing element insofar as use of a gTLD is required, necessary and functional to indicate use of a name on the Internet. The Domain Name consists of Complainant’s CLEAR Mark with the addition of words (i.e., “4g” and “internet”) that describe aspects of Complainant’s high speed internet services. The addition in a domain name of words or phrases descriptive of the very goods or services with which the mark is used to the mark itself constitutes confusing similarity. Lilly ICOS LLC v. Loris Mosser,WIPO Case No. D2005-1157 (“The addition of the generic words “my” and “pharmacy,” and the generic top level domain suffix “.org” do not avoid confusion, since at least some internet users are liable to assume that the Domain Name identifies an online pharmacy of or approved by the Complainant for its “Cialis” product.”); Forte (UK) Limited v.Eugenio Ceschel,WIPO Case No. D2000-0283 (
The Panel therefore finds that Complainant satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such a prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the CLEAR Mark for any use, including for use in the Domain Name, and that there is no evidence Respondent registered the Domain Name for any bona fide use. Respondent has failed to contest these assertions. Accordingly, and in view of the Panel’s findings below, the Panel finds that Respondent has no rights or legitimate interests.
The Panel therefore finds that Complainant satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Respondent is using Complainant’s CLEAR Mark to resolve to a web site on which: (1) Complainant’s CLEAR Mark and design mark/logo (Serial No. 77/622810) appears prominently; (2) Complainant’s services are offered for sale; (3) Complainant’s partners’ names/logos are featured; and (4) the words “authorized retailer” appears. Respondent’s use of the CLEAR Mark (after the United States registration for the Mark issued) and Complainant’s design mark/logo on a website that is purporting to sell Complainant’s products, convinces the Panel that Respondent was well aware of Complainant’s rights in the CLEAR Mark when it registered the Domain Name. Further evidence of this is a statement in small print at the bottom of every page of Respondent’s website: “CLEAR® is a trademark of Clear Wireless LLC and/or its affiliates.” Thus, the Panel finds that Respondent registered the Domain Name in bad faith.
With regard to bad faith use, Respondent is using a domain name that is confusingly similar to Complainant's mark to host a site that is purporting to sell Complainant’s services in competition with Complainant. The Panel concludes that by using the Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's CLEAR Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy. Clearwire Legacy, LLC v. Leon Ganesh,WIPO Case No. D2010-0148; Clearwire Legacy LLC v. Nexbox / DomainsByP, WIPO Case No. D2010-0579; Advance Magazine Publishers Inc. v. Red Wagon Films,WIPO Case No. D2006-0893.
The Panel therefore finds that Complainant satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For 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 Complainant.
Harrie R. Samaras
Sole Panelist
Dated: September 6, 2011
Full & Egal Universal Law Academy