Complainant is Red Pocket Inc. of Thousand Oaks, California, United States of America, represented by Philip Z. Kimball PLLC, United States of America.
Respondent is American Wireless LLC. of Arlington, Virginia, United States of America, self-represented. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2013. On February 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 18, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain names. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on February 22, 2013.
The Center verified that the Complaint together with the amended 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 February 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2013. The Response was filed with the Center on March 25, 2013.
The Center appointed Mark Partridge as the sole panelist in this matter on April 17, 2013. 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 a wireless phone service carrier. It uses the name and mark RED POCKET MOBILE for its goods and services. Complainant sells its goods and services to wholesalers, who in turn sell those products and services to retailers, who resell to customers.
Respondent is a telecommunications product and service provider. Respondent acquires its products and services from wholesalers. It works with a small number of carriers, with only one carrier featured on any of its web sites. Respondent is a reseller of goods and services of Complainant. The disputed domain names are used by Respondent only for the marketing and sale of Complainant’s products and services and for providing support and billing services for its Red Pocket Mobile customers. Respondent’s web sites bear a disclaimer stating that it is not affiliated with Red Pocket Mobile. 5. Parties’ Contentions A. Complainant
The disputed domain names and are identical or confusingly similar to Complainant’s RED POCKET MOBILE mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. Complainant acknowledges that Respondent is a reseller of Complainant’s goods and services. It relies on the case Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, to argue that Respondent’s use of Complainant’s marks in the disputed domain names is not a bona fide offering of goods or services and does not create a legitimate interest in the disputed domain names. Complainant asserts that Respondent’s use fails the Oki Data test for two critical reasons: (1) Respondent misstates its relationship with inaccurate statements that are difficult to locate and decipher; and (2) Respondent uses Complainant’s mark to lure customers to Respondent’s retail stores where it sells goods and services that compete with Complainant’s.
Respondent has registered and is using the disputed domain names in bad faith. Respondent’s obvious intent to obfuscate its relationship with Complainant and to mislead current and potential customers of Complainant for the purpose of making purchases either in person or by telephone where Respondent can offer a wider variety of products and services is a textbook example of an attempt to unfairly gain a commercial advantage over Complainant and constitutes a bad faith use of Complainant’s trademark. B. Respondent
Respondent contends that its use of the disputed domain names constitutes nominative fair use of Complainant’s marks as a reference to the goods and services of Complainant, which it resells through its web sites. Respondent asserts that this fair use is legitimate and does not involve bad faith registration or use of Complainant’s marks. Respondent relies on the cases Patmont Motor Werks, Inc. v. Gateway Marine, Inc., (1977 WL 811770)(N.D.Cal. 1997) and Toyota Motor Sales, U.S.A., Inc. v. Farzad Tabari, No. 07-55344 (9th Cir. 2010). 6. Discussion and Findings
In this Panel’s view, this is a difficult case for relief under the UDRP Policy. In a classic case of cybersquatting, respondent does not use the mark for the sale of actual goods or services, but instead holds the domain name with the goal of selling the domain name for profit or uses the domain name to redirect Internet traffic to the goods and services of others in exchange for linking fees or other forms of profit. Neither is the case here.
It is undisputed that Respondent is a reseller of Complainant’s goods and services. Respondent clearly uses Complainant’s mark in the disputed domain names with the goal of selling Complainant’s goods and services. Respondent has not registered the disputed domain names with the intent of reselling them. And Respondent does not use the disputed domain names with the intent of profiting from linking fees. Respondent’s goal is to sell Complainant’s products, which it has the right to do.
Does Respondent have a right or legitimate interest to use the disputed domain names to do this? From Respondent’s point of view it does have the right because it is selling Complainant’s goods and services and therefore has the right of nominative fair use to refer to those products and services by the disputed domain names.
From Complainant’s point of view, Respondent has not met the requirements of fair use because it thinks the disclaimer is confusing and because Respondent’s web sites lead customers to stores which also sell competitive products.
Is Respondent permitted to do this under applicable law? Since both parties are in the U.S., the Panel concludes that U.S. trademark principles apply in this case. It is well-established that a product reseller may refer to the product by domain name as long does not do so in a manner that creates confusion or deception about the nature or source of the goods. Some courts have allowed nominative fair use as long as the defendant limits its use to that needed to fairly refer to the plaintiff, but no more. These principles can be difficult to apply.
In a UDRP case, a panel is confronted with three basic elements. Here, it is apparent that the disputed domain names are similar to marks owned by Complainant. No one has disputed that fact, and the Panel believes the additional descriptive terms added by Respondent do not avoid this conclusion. Clearly, Respondent is using the disputed domain names to refer to goods and services of Complainant.
The next element is whether Respondent has a right or legitimate interest in using the disputed domain names. Oki Data and related cases acknowledge that there are circumstances in which a reseller may be using a domain name that incorporates complainant’s mark for a bona fide offering of goods or services. Are those circumstances present here? Respondent is in fact selling the goods and services of Complainant. The only goods and services featured on the websites at the disputed domain names are those of Complainant, although the sites do invite customers to shop at Respondent’s stores. At those stores, customers will have the opportunity to buy the goods of others. Does this go too far? Do the web sites disclose Respondent’s relationship with Complainant, or lack thereof? The web sites do indeed have a disclaimer to that effect, but is it sufficiently conspicuous and clear? Has Respondent attempted to corner the market in relevant domain names? There is no contention that it has, and the record presented shows there are other alternatives available to Complainant and others for selling the goods and services of Complainant. On balance this is a very close question, and under the Policy it is a question on which Complainant bears the burden.
The final element is whether Respondent has registered and used the disputed domain names in bad faith. None of the circumstances listed in the Policy are a clear fit to this situation. There is no attempt to sell the disputed domain names for profit, no alleged pattern of bad faith, no attempt to disrupt the business of a competitor. Is Respondent deliberately attempting to attract Internet users to its web site by creating a likelihood of confusion with Complainant’s mark. Certainly, Respondent is attempting to profit from the sale of Complainant’s goods and services, but not by creating confusion. Instead, Respondent is seeking have Internet users find Complainant’s products and services, which it resells. That appears to be Respondent’s primary intent.
It has been recognized that the Policy is not intended to apply to ordinary cases of trademark infringement, but rather only to cases of cybersquatting. Relief should be granted when it appears more likely than not that Respondent has registered and used the disputed domain names in bad faith, with no rights or legitimate interests in disputed domain names.
It strains the Policy, however, to apply it against Respondent in this situation where it appears more likely than not that Respondent acted in good faith in selecting the disputed domain names, and that it did so with the primary bona fide intent of selling Complainant’s products and services without seeking to cause confusion with Complainant or to redirect Internet users to the products and services of others. Respondent has attempted to limit the web sites using Complainant’s marks strictly to Complainant’s products and services. Respondent has also attempted to explain its lack of formal relationship with Complainant with a disclaimer. Those attempts appear to this Panel to be genuine. They do not appear to be a scam or a cynical attempt to confuse both the Panel and Internet users.
As stated at the beginning of this discussion, this is a difficult case, and a close case. Ultimately, the Panel concludes that Complainant has not met its burden of showing that Respondent has registered and used the disputed domain names in bad faith. This conclusion is strictly limited to the application of the Policy. A different result could well be reached in an infringement action in court where bad faith is not required and different standards apply. 7. Decision
For the foregoing reasons, the Complaint is denied.
Mark Partridge
Sole Panelist
Date: May 15, 2013
Full & Egal Universal Law Academy