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Cellular One Group v. COI Cellular One, Inc. [2000] GENDND 1838 (28 December 2000)


World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cellular One Group v. COI Cellular One, Inc.

Case No. D 2000-1521

1. The Parties

Complainant: Cellular One Group
5001 LBJ Freeway,
Suite 700,
Dallas,
Texas,
USA

Respondent: COI Cellular One Inc.,
150-9040 Blumdell Road,
Richmond,
BC V6Y 1K3
Canada

2. The Domain Name and Registrar

Domain Name: "cellone-online.com"

Registrar: Network Solutions Inc.

3. Procedural History

The original Complaint was received by WIPO by email on November 3, 2000, and in hardcopy form on November 10, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Registrar has confirmed that "cellone-online.com" ("the Domain Name") was registered through Network Solutions Inc. and that COI Cellular One ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Name.

On November 14, 2000, WIPO notified the Respondent of the Complaint in accordance with the Rules, paragraph 2(a) and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was December 3, 2000. On December 5, 2000, the Respondent requested an extension of time for the Response until December 15, 2000. The Complainant objected to an extension, but WIPO granted an extension until December 12, 2000. The Response was received by WIPO in email form 0n December 9, 2000, and in hardcopy form on December 13, 2000.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and a Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panel’s Decision is December 28, 2000.

On December 22, 2000, the Complainant requested an opportunity of responding to the Response. On December 24, 2000, the Panel, having been given no reason to vary the normal procedure, declined to allow a further submission from the Complainant and notwithstanding the Complainant’s willingness to consent to a further submission in answer from the Respondent.

4. Factual Background

The Complainant owns numerous U.S. and international trademark registrations and applications for the marks CELLULARONE and CELLONE (and for related designs, derivations and logos) for a wide variety of goods and services, including electronic products and telecommunications services. For present purposes it is sufficient to cite US registration number 1,983,566 for CELLULAR ONE (words), which was registered on July 2, 1996, first use in commerce being claimed from December 1, 1983, and US registration number 2,019,447 for CELLONE (word in stylised form), which was registered on November 26, 1996, first use in commerce being claimed from April 11, 1996. However, it is also to be noted that the Complainant has no relevant registrations covering Canada, the Respondent’s home territory.

In 1989 the Respondent’s predecessor first started trading in Canada as a provider of inter alia cellular telephones and related services under the trading name Cellular One. According to the Respondent, the Respondent’s predecessor also used the name Cell One in 1989. The Complainant, which was aware of the substance of this claim when filing the Complaint, has not disputed it.

In 1990 the Respondent was incorporated under the name COI Cellular One Inc. and took over the business of its predecessor. According to the Respondent it continued to use the name Cell One as well as the name Cellular One.

On February 4, 1999 the Respondent registered the Domain Name.

On September 1, 1999 the Complainant wrote to the Respondent drawing the latter’s attention to its rights, claiming that the Respondent’s action in registering and using the Domain Name constituted an infringement of those rights and requested, inter alia, transfer of the Domain Name.

There are 2 aspects of that letter, which the Panel regards as noteworthy. First, as at that date (i.e. September 1, 1999 the Complainant did not believe that the Respondent was deliberately infringing its rights, for the letter stated "we assume you did not intentionally violate federal law" and "any continued use of the trade marks …. without express permission will be regarded an intentional infringement". Secondly, the letter voiced no complaint about the Respondent’s corporate name.

The Respondent replied in writing on September 27, 2000, stating that it had been using the name CELLONE since 1989. There were verbal communications between the parties’ lawyers in the intervening period, but there appears to be a dispute as to whether or not anything of significance was said during those conversations, so the Panel will ignore them.

The Complainant responded by initiating this administrative procedure.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows: -

  • The Complainant’s Trademarks predate any use or registration of the domain name "cellone-online.com", are in full force and effect, and have not been abandoned. Complainant therefore has the prima facie exclusive prior rights to use the trademarks CELLULARONE and CELLONE or any variants thereof throughout the world, in connection with its registered goods and services, and in connection with its associated marketing, advertising, and promotional activities, such as in Internet domain names.

  • Complainant has engaged in extensive advertising and media campaigns including: radio, television, print publications, the Internet and word of mouth. Cellular One Group has a significant presence on the Internet. The Complainant has been using the CELLULARONE mark and providing high quality telecommunications services (through its licensees) since 1983. Complainant has been using the CELLONE mark since 1996. Since its inception in 1983 Complainant has spent will over a billion dollars advertising its service marks, including CELLULARONE and CELLONE. Its official Internet web site is at "www.cellularone.com".

  • Through its ongoing and costly media and advertising campaigns, and by its licensees providing the highest quality service under the trademarks, Complainant has created enormous monetary value, reputation and goodwill in the trademarks. These trademarks are symbols of Cellular One Group’s high quality reputation and valuable goodwill, and have become, through extensive use and advertising, famous and well-known trademarks throughout the U.S. and the world. In passing the Panel notes that whereas Exhibit 7 to the Complaint was said to comprise "sample promotional merchandise containing the CELLULARONE and/or CELLONE brand name and evidencing the widespread fame and use", the Panel could find no reference to any promotional material featuring the CELLONE trade mark.

  • Cellular One Group is not related to Respondent, has no contracts or agreements with Respondent, has no business relationship or transactions with Respondent, and has no privity with Respondent whatsoever. It has not granted its permission or consent to the use and appropriation of CELLULARONE and CELLONE in Respondent’s domain name, or in any manner whatsoever.

  • The Domain Name is identical or confusingly similar to the trademarks/service marks in which the Complainant has prior rights. Visually, it is strikingly the same as the Complainant’s trademarks/service marks. It contains and incorporates the entire registered trademark CELLONE and a variation of trademark CELLULARONE. Phonetically, it is strikingly the same as the trademarks/service marks. In pronouncing "cellone-online.com", the speaker has no alternative but to say CELLONE as part of the pronunciation. In addition, "cellone-online.com" sounds confusingly similar to CELLULARONE. The Domain Name has the same connotation and commercial meaning to the public as the Complainant’s trademarks/service marks. The Domain Name means nothing other than the business associated with Cellular One Group. CELLONE and CELLULARONE are not dictionary words.

  • The mark CELLONE is a derivative of Complainant’s famous CELLULARONE mark and is known and used by the public and consumers of the Complainant as a shortened form of the mark CELLULARONE. Because of this virtual identical similarity in sight, sound and meaning, members of the public who find "cellone-online.com" on Internet search engines or elsewhere are likely to believe falsely and mistakenly that the source or origin of the domain name is Cellular One Group, or that the domain name is sponsored by, endorsed by, approved by, licensed by, connected, associated or affiliated with Cellular One Group. If the domain name is not transferred to Cellular One Group, the public is likely to be deceived.

  • Complainant’s use and registration of its marks are prior to the NSI registration date of Respondent’s domain name containing these marks or a variation thereof and superior to any alleged rights Respondent may have in these marks or variations thereof, including the right to use and own the domain name "cellone-online.com".

  • CELLULARONE and CELLONE are unique and inherently distinctive coined words that are not even in any dictionary.

  • Respondent cannot make any use in commerce of the Domain Name without infringing the trademark rights of Complainant in the U.S. and around the world.

  • Since CELLULARONE and CELLONE are so famous and not words in any dictionary, Complainant has no alternative but to conclude and assert that Respondent’s registration of the Domain Name was done with the blatant and deliberate intent to trade on and procure the goodwill, fame, renown, reputation and advertising expenditures of Complainant as related to the Complainant’s Trademarks, to trade on and procure use of the Complainant’s Trademarks alone, to prevent Complainant’s own use of its Trademarks, to deceive and confuse the consuming public, and to blur whatever distinctions existed between the parties. [NB This is just one of the many paragraphs in the Complaint, which deal with the allegation of bad faith. They are broadly repetitive and rely in the main on the uniqueness and fame of the Complainant’s trademarks. The only other matters which the Complainant cites in support of bad faith are the correspondence in 1999/2000, between the parties’ attorneys and the fact that following notice of the Complaint the Respondent provided a link from the Respondent’s website to the Complainant’s website.]

    B. Respondent

    The Respondent’s main relevant contentions, which are set out in an affidavit of the Respondent’s predecessor, founder and President, Kenneth Shewfelt, are as follows:-

  • "At the time of the incorporation of [the Respondent] I was not aware of any third party using the phrase "Cellular One" or "Cellone". I was not aware of the existence of the Complainant, Cellular One Group, at the time I incorporated the COI Cellular One. The Registrar of Companies accepted my name registration request for COI Cellular One Inc. and did not advise me of any conflicts with my proposed name. The prefix "COI" is simply an abbreviation of the name "Cellular One Inc."."

  • "Since the date of incorporation [December 8, 1990], [the Respondent] has been commonly known throughout the industry as either "Cellular One" or "Cell One".

  • "I received a letter from the Complainant in 1999 about my use of the Domain Name. I conducted some further research which confirmed that the Complainant had not received a trade mark in Canada and, therefore, believed that I was not infringing any trade marks by using the Domain Name."

  • "To avoid any confusion, I instructed [an employee] to set up links in the COI Cellular One’s website to the website operated by the Complainant."

  • The Respondent denies any bad faith intent behind the registration of the Domain Name and Mr Shewfelt deposes that the Domain Name "has only been used in connection with the bona fide offering of goods and services to customers of [the Respondent]."

    6. Discussion and Findings

    According to paragraph 4(a) of the Policy, the Complainant must prove that

    (i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

    (ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and

    (iii) The Domain Name has been registered and is being used in bad faith.

    For present purposes it is sufficient to point out that the Policy is only designed to deal with a very narrow category of case, namely bad faith registration and use of domain names, in which the bad faith intent has to be directed towards the Complainant whether that intent be to extort sums of money out of the Complainant or to block the Complainant’s route to a domain name or to disrupt the Complainant’s business or to damage the Complainant’s goodwill or to profit unfairly from the Complainant’s goodwill. The burden of proof is on the Complainant.

    Identical or confusing similarity

    Paragraph 4(a)(i) of the Policy says nothing about registered rights or indeed exclusive rights. It is sufficient for the Complainant to demonstrate that it has rights in a trademark or service mark and that the Domain Name is identical or confusingly similar to the relevant trademark or service mark. The purpose of this subparagraph is simply to ensure that the Complainant has a bona fide basis for making the Complaint.

    Here, the Complainant is the proprietor of trade mark and service mark registrations for the word Cellone in a stylised form, all the letters being in upper case and the last three in ‘bold’. Given that the Domain Name is the same word with the addition of the generic term ‘-online’, the panel has no difficulty in finding that the two are similar. Given also that the parties both trade in broadly the same field of activity (albeit perhaps not in the same geographical area), the potential for confusion if they ever were to trade in the same area is obvious.

    The Panel finds that the Domain Name is confusingly similar to a trademark or service mark in which the Complainant has rights

    Rights or legitimate interest of the Respondent

    Proving that the Respondent has no rights or legitimate interests in respect of the Domain Names requires the Complainant to prove a negative. For the purpose of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the Respondent.

    The Complainant relies heavily on its extensive reputation and goodwill in respect of the name Cellular One and use of that name going back to 1983. It characterises Cellone as a variant or derivative of the name Cellular One and asserts use of Cellone from 1996. The Respondent has demonstrated use of its corporate name COI Cellular One Inc. going back to 1989/90 and has claimed use of the name Cellone over the same period (i.e. since 1989/90), apparently also regarding Cellone as an abbreviation or derivative of Cellular One.

    The Complainant does not complain of the Respondent’s corporate name. When the Complainant launched the Complaint the Complainant knew that the Respondent was claiming use of Cellone going back to 1989. The Complaint contains no denial of that claim. If the Complainant conducted any enquiries to test the accuracy of the claim, the results of those enquiries are not before the Panel. The Panel concludes that either the claim is accurate or, if it is not accurate, the Complainant cannot prove that it is not accurate.

    Indeed, the Complaint in paragraph 8(b) concedes that the Respondent may have rights as alleged, but claims that its use and registration of its marks precede the Respondent’s registration of the Domain Name. The Panel observes that even if the Complainant’s rights are superior to the Respondent’s rights, that does not of necessity mean that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel has no evidence as the extent of the Complainant’s rights in Canada.

    If the Complainant cannot prove that the Respondent’s claim to use of Cellone since 1989 is not accurate, the Complainant will also not be able to prove that Mr Kenneth Skewfelt’s sworn statement to the effect that the Respondent has been commonly known throughout the industry in Canada as either "Cellular One" or "Cell One" since 1990 is not true. If the Respondent has been commonly known as "Cell One" for 10 years, the Complaint must fail by virtue of paragraph 4(c)(ii) of the Policy, "Cellone" being the substance of the Domain Name.

    The evidence as to whether or not the Respondent has rights or legitimate interests in respect of the Domain Name is not entirely satisfactory either way. If the Respondent has been known as "Cell One" for 10 years, one would have expected the Respondent to have produced documentary support for the claim as it did for its use of its corporate name, but it did not do so.

    Nonetheless, the Respondent has produced a sworn statement from its President and the Panel is not in these circumstances prepared to make an effective finding of perjury against Ms Skewfelt. The Complainant may feel aggrieved that it was not given an opportunity of coming back on Mr Skewfelt’s affidavit, but the Panel took the view that when the Complaint was lodged the Complainant had been sufficiently alerted to the Respondent’s case and could have made further enquiries to deal with that case, had it wished to do so. In any event this administrative procedure is a far from ideal forum for resolving conflicts of evidence.

    Accordingly, the Panel finds that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name.

    Bad Faith

    The Complaint has failed under paragraph 4(a)(ii) and for reasons, which make it plain that the allegation of bad faith registration and use of the Domain Name must also fail.

    However, the Panel questions how the Complainant could have hoped to have made good its bad faith claim as to registration of the Domain Name when, some months after the date of registration, its first letter to the Respondent made an assumption in favour of the Respondent that the alleged violation of its trade mark rights had not been deliberate. The very essence of bad faith registration and use is that the registration was a deliberate attack on the Complainant’s rights.

    What has happened since the date of that letter to encourage the Complainant to take a less charitable view of the Respondent’s bona fides? First, the failure of the Respondent to provide a timely response to the letter; secondly, the posting of the link to the Complainant’s site; thirdly, a reappraisal of the fame of the Complainant’s trade marks such as to render it inconceivable that the Respondent did not know all along of the Complainant’s rights and inconceivable that the Respondent did not intend most of the sins set out in paragraph 4(b) of the Policy.

    As to the first, there is a conflict of evidence, which the Panel cannot resolve. The Respondent says that its lawyer gave the Complainant’s lawyer the substantive response verbally during one or more of the telephone conversations between them. The Panel observes that from the timescale the Complainant does not appear to have treated the issue with much urgency, at any rate not an urgency consistent with bad faith invasion of one’s rights. As to the second, the Panel finds the Respondent’s explanation convincing. True, the result may very well be confusing for some, but the Panel accepts that the link was made with a view to obviating rather than creating confusion. As to the third, the drafting of these paragraphs of the Complaint came across to the Panel as an attempt to ensure one way or another that every conceivable allegation was made irrespective of its merit. Certainly none of those paragraphs reflects the reality that the registration of the Domain Name took place only a few months after the Complainant’s first commercial use of the name Cellone and that the Complaint contains no evidence as to the extent to which anybody in Canada might have been aware of it. It is worth repeating that the Complaint contains no evidence at all as to the Complainant’s trade and/or goodwill in Canada, the Respondent’s home territory.

    In the result, the Panel finds that the Complainant has failed to prove that the Domain Name was registered and is being used in bad faith.

    7. Decision

    In light of the findings set out above, namely that, notwithstanding that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights, the Complainant has failed to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name and has also failed to prove that the Domain Name was registered and is being used in bad faith, the Complaint fails and is dismissed.

    Tony Willoughby
    Sole Panelist

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