Complainant is Eclipse Telecom, LLC of Chicago, Illinois, United States of America, represented by InfoTech Law Advocates, P.C., United States of America.
Respondent is JustCom /Just Communications, Inc. of Chicago, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 27, 2015. On February 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2015, the Registrar 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 March 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 27, 2015.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 16, 2015. 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 provides telecommunications management solutions. Complainant is based in Chicago, Illinois, in the United States. Since 2009, Complainant has been operating under the name Eclipse Telecom. Complainant owns the registration for the domain name .
Respondent registered the disputed domain name on November 10, 2011. The disputed domain name resolves to a URL for , which offers products competitive to those of Complainant. Respondent is based in the same city and state as Complainant. Respondent has no license from, or other affiliation with, Complainant, nor any permission to use Complainant’s marks in connection with its activities. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) the disputed domain names is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interest in the disputed domain name; and (iii) Respondent registered and is using the disputed domain names in bad faith.
Complainant contends that the disputed domain name is identical or confusingly similar to the mark ECLIPSE TELECOM, for which it claims to have developed common law trademark rights. Complainant states that it operates in forty states and thirty one countries, and that its use of the ECLIPSE TELECOM predates Respondent’s registration of the disputed domain name. Complainant further claims that Respondent, operating in the same city and state, knows of this use.
Finally, Complainant contends that Respondent has acted in bad faith, using the disputed domain name to revert to its own competitive website. In this way, Respondent has used the disputed domain names for its own apparent financial gain. B. Respondent
Respondent did not reply to Complainant’s contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
The threshold issue confronting any panel in a UDRP proceeding is whether a complainant has rights in the trademark or service mark to which that complainant claims a disputed domain name is identical or confusingly similar. In the present case, Complainant did not furnish the Panel with evidence that the Complainant possesses a valid trademark registration of the ECLIPSE TELECOM mark in any jurisdiction or venue. Thus, in determining whether Complainant’s case can be sustained, the Panel must first decide whether Complainant can legitimately assert rights in this unregistered mark on another basis. See Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123 (transferring ). Many previous panels operating under the Policy have found complainants to have common law trademark rights sufficient to satisfy paragraph 4(a)(i). Id.; See also Jeffrey Archer v. Alberta Hotrods tda CELEBRITY 1000,WIPO Case No. D2006-0431 (June 1, 2006).
To sustain such a finding, a complainant must demonstrate that as used, its mark is either inherently distinctive (i.e., arbitrary, fanciful, or suggestive) or is a descriptive term that, by virtue of relevant use, has achieved a “secondary meaning” (i.e., the descriptive term has taken on a second, trademark meaning). Over the course of many Policy decisions, a general consensus among panels has evolved with respect to evaluating the applicability of common law rights to a given mark. For descriptive marks, panels have considered factors such as longevity of use, amount of sales, nature and extent of advertising, consumer surveys and media recognition in determining whether secondary meaning exists. See Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052 (October 11, 2006); Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083 (April 3, 2001); as well as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. Second Edition (“WIPO Overview 2.0”). In conducting such an evaluation, a panel should also take into consideration that the hurdle a complainant must clear in establishing such rights is higher if the claimed trademark is descriptive. See One Creative Place, LLC v. Kevin Scott, WIPO Case No. D2006-0518 (June 16, 2006); and Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001 (March 1, 2006).
Although it is an English word, “eclipse” is not obviously generic or descriptive for telecommunications services. Thus, the Panel concludes that Complainant’s ECLIPSE TELECOM mark is inherently distinctive.
In analyzing the other considerations involved in its determination regarding common law rights, the Panel notes that Respondent filed no response to Complainant’s contentions. It is thus reasonable for the Panel to proceed as though Complainant’s contentions are true, unless contrary to the evidence presented or facts known by the Panel within the purview of its own experience. See Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123 and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).
In this case, Complainant offers no sales totals, but does assert without contradiction that it is a leading provider of enterprise telecommunications management solutions, offering services under the mark ECLIPSE TELECOM, since at least 2009. Complainant further asserts, without contradiction, that it operates in forty states and thirty one countries. Finally, Complainant asserts that it operates in the same city as Respondent, and that Respondent is aware of Complainant’s activities undertaken by Complainant under Complainant’s ECLIPSE TELECOM mark, which rights predate any use of the term by Respondent.
Taking into account all of the considerations above, the Panel determines that Complainant has demonstrated its common law trademark rights in ECLIPSE TELECOM for purposes of the Policy.
The other aspect of Policy, paragraph 4(a)(i) that Complainant must establish that the disputed domain name is identical or confusingly similar to a mark in which it has rights. The disputed domain name incorporates in full the mark ECLIPSE TELECOM, in which Complainant has established rights. The disputed domain name is identical to Complainant’s ECLIPSE TELECOM mark, and also its domain name, except for the hyphen in Complainant’s domain name. See Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (August 24, 2004).
Accordingly, the Panel rules that Complainant has satisfied its burden in proving that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain names at issue in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondents did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has apparently used the website associated with the disputed domain name to divert Internet users to a competitive website, apparently for Respondent’s financial gain.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] 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 [Respondent’s] website or location or of a product or service on [the] web site or location.” As noted in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a competitive website. In so doing, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Furthermore, Respondent is alleged to be based in the same city and state as Complainant, which is also noted in the registration facts as recorded by Respondent. It is uncontested in the record that Respondent is aware of Complainant’s use of its ECLIPSE TELECOM marks.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) 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 domain name be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Date: April 26, 2015
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