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Nortel Networks Limited and Nortel Networks NA Inc. v. FastWrite Asia Co. Ltd. and FastWrite [2000] GENDND 1801 (21 December 2000)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

1. The Parties

The Complainants in this administrative proceeding are, respectively, Nortel Networks Limited, a Canadian corporation with its principal place of business at World Trade Center of Montreal, 380 St. Antoine Street West, 8^th Floor, Montreal, Quebec, Canada H2Y 3Y4 and Nortel Networks NA Inc., a Delaware corporation with its principal place of business at 4401 Great American Parkway, Santa Clara, California, USA represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, of 1300 1 Street, NW, Washington, DC 20005-3315, USA.

The Respondents are FastWrite Asia Co. Ltd., with an address at Avenue Henri Durant, 4 Bte 58, Brussels, Bt 1140, Belgium and FastWrite, with an address at Rue A. Bracke, 9, Kraainem, Bt 1950, Belgium.

The domain names in issue are <mynortelnetworks.com> and <mybaynetworks.com> ("the Domain Names"), the Registrar of which is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, VA 20170, USA ("Network Solutions").

The WIPO Arbitration and Mediation Center ("the Center") received on August 24, 2000, an electronic version of the Complaint and accompanying documents and on August 28, 2000, a hard copy version of the same. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On September 18, 2000, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On August 29, 2000, the Center transmitted via e-mail a request for registrar verification in connection with this case. On August 31, 2000, Network Solutions transmitted via e-mail to the Center a Verification Response, confirming that the registrant of the domain name <mynortelnetworks.com> is the First Respondent herein, and stating that the administrative and billing contact is Stéphane Juseret at the above address of the First Respondent. On December 15, 2000 Network Solutions confirmed that the registrant of the domain name <mybaynetworks.com> is the Second Respondent and that the administrative and billing contact is Pat Boens, FastWrite (at the Second Respondent’s above address).

No formal Response has been filed by the Respondents, but by a letter dated October 10, 2000, apparently signed by Stéphane Juseret as Manager of FastWrite Asia Co. Ltd. and by Patrick Boens as Managing Director of FastWrite Belgium the Respondents agreed to transfer the Domain Names to the Complainants.

On December 5, 2000, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision was scheduled to be forwarded to the Center by December 18, 2000.

(a) The First Complainant is the proprietor of a number of United States Trademarks including:

(i) Registration Number 2184321 for the mark NORTEL and Design

(ii) Registration Numbers 1980303 and 2001714 for the mark NORTEL

(iii) Application No. 75/544171 for the mark NORTEL NETWORKS

(b) The Second Complainant is the registered proprietor of U.S. Trademarks Nos. 2019659 and 2044256 for the mark BAY NETWORKS.

The Complainants set out in their Complaint a full case against the Respondents, which in the light of the agreement referred to above, the Panelist does not propose to recite here.

As indicated above, the Respondents have submitted no formal Response, but have agreed to transfer the Domain Names. However, Network Solutions have apparently not been able to act on that agreement and effect the desired transfers without notarial certification of the signatures of Stéphane Juseret and Patrick Boens. There have been problems in securing such notarization.

In the light of the problems referred to in the previous paragraph, this Panelist has been asked to give effect to the intentions of the parties. This raises the question whether the Panel has power under the Policy to order the transfer of a domain name to a complainant on the simple basis of the bare consent of the respondent. Under the Policy, paragraph 3 lists three circumstances under which a Registrar will, inter alia, transfer a domain name registration. Only para. 3(c) is applicable to an Administrative Panel:

"c. our receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which you were a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN".

For an administrative proceeding to be "conducted under this Policy" it must be one that complies with paragraph 4(a) of the Policy. In particular:

"In the administrative proceeding, the complainant must prove that each of these three elements are present."

In any event having considered the Complaint, the Panelist has no difficulty in finding that all three of the elements set out in paragraph 4(a) of the Policy have been proved to be present in this case. Further, in view of the Respondents’ consent to transfer it is unnecessary to particularize how the elements of paragraph 4(a)(ii) and (iii) of the Policy have been proved to the Panelist’s satisfaction.

In the light of the findings in paragraph 6 above, the Panelist concludes that:

- the domain name <mynortelnetworks. com> is confusingly similar to the trademark NORTEL NETWORKS of the First Complainant;

- the domain name <mybaynetworks.com> is confusingly similar to the trademark BAY NETWORKS of the Second Complainant;

- the Respondents have no rights or legitimate interests in the Domain Names;

- the Domain Names have been registered and are being used in bad faith.

Accordingly, the Panelist orders that:

- the domain name <mynortel networks.com> be transferred to the First Complainant NORTEL NETWORKS LIMITED; and

- the domain name <mybaynetworks.com> be transferred to the Second Complainant NORTEL NETWORKS NA INC.

Christopher Tootal
Presiding Panelist

Dated: December 21, 2000