DECISION

PC2Call Limited v. Bernard Ferrie

Claim Number: FA0112000103181

PARTIES

Complainant is PC2Call Limited , London (“Complainant”) represented by Akin Oyolola, of Legal Department, Vectone Group.  Respondent is Bernard Ferrie, Quebec, Canada (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mypc2call.com>, registered with eNom Inc..

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 10, 2001; the Forum received a hard copy of the Complaint on January 14, 2002.

On December 31, 2001, eNom Inc. confirmed by e-mail to the Forum that the domain name <mypc2call.com> is registered with eNom Inc. and that Respondent is the current registrant of the name.  eNom Inc. has verified that Respondent is bound by the eNom Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 4, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@mypc2call.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 12, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The disputed domain name <mypc2call.com> is confusingly similar to Complainant’s PC2CALL mark.

2. Respondent is not commonly known as <mypc2call.com>, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use without the intent for commercial gain.  Therefore, Respondent does not have a legitimate interest in the domain name at issue.

3. Respondent has registered the domain name in dispute with the primary purpose of selling the registration to Complainant.  Respondent has registered <mypc2call.com> for the primary purpose of disrupting Complainant’s business.  Furthermore, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s  mark as to the source or sponsorship of Respondent’s website.  Thus, Respondent registration and use of <mypc2call.com> is in bad faith.

B. Respondent

No Response was received.

FINDINGS

Complainant is part of an international telecommunications company headquartered in London.  Complainant uses its common law trademark PC2CALL to provide Internet telephone services through its website located at <pc2call.com>.  Complainant makes over $2 Million USD annually through sales off its website.  Complainant has been using the mark since it has registered its corresponding domain name on March 2, 2000. 

Respondent registered the domain name in dispute on August 24, 2001.  Respondent’s initial use of the domain name was to offer the same Internet phone services the Complainant’s website offers.  Further, Respondent’s website incorporated the same text, color and design as Complainant’s website.  The major difference between the two websites was that Respondent’s website referenced “Vecfone” while Complainant’s website uses its parent’s corporate name, “Vectone.”

On November 22, 2001, Complainant sent a letter to Respondent requesting transfer of the disputed domain name and <vecfone.com>.  Complainant also contacted Fasthosts Internet Limited, the relevant website hosting company for the two disputed domain names.  Since upon information and belief, Respondent has transferred <vecfone.com> to another party, the Panel will only consider <mypc2call.com> in this decision.  

On Novemebr 24, 2001, Respondent contacted Complainant via e-mail and informed Complainant that he was a “web service broker (salesman)” and that he would contact the owner of the website and then he would let Complainant know about whether the owner of the website will comply with Complainant’s request.  Four days later, Respondent informed Complainant that the owner of the website will take off all of the similar elements and asked if Complainant was interested “to buy these domains provide a quotation for how much you are offering.”

Based on the Complaint, Fasthosts had terminated hosting the domain name in dispute.  Respondent switched hosts and began redirecting users of <mypc2call.com> to <talafone.com>, which provides similar Internet services to that of Complainant.  Complainant filed another complaint, this time with the new web host and thus, although the domain name in dispute is in connection with a website that currently advertises Internet phone services, it sits “under construction.”

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has had a successful business using its mark PC2CALL in connection with its Internet phone services for over a year before Respondent registered <mypc2call.com>.  Complainant has therefore, established its rights in its mark through continuous use for a significant amount of time before Respondent registered the disputed domain name.  See Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights).

The addition of the term “my” as prefix to a mark does not diffuse the confusingly similar nature between the disputed domain name and Complainant’s mark.  Therefore, <mypc2call.com> is confusingly similar to Complainant’s mark PC2CALL.  See Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May 1, 2000) (finding that the domain name “myinfospace.com” is confusingly similar to Complainant’s mark); see also NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark…”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward to demonstrate it has rights or legitimate interests in <mypc2call.com>. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").  Further, there is a presumption that Respondent has no rights or legitimate interests with respect to a disputed domain name where Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Respondent has used the disputed domain name, which is a confusingly similar to Complainant’s mark, in connection with a service that competes with Complainant.  Further, Respondent’s offer to sell the registration to Complainant is also evidence that Respondent is not using the domain name in connection with a bona fide offering of goods or services and thus has failed to satisfy Policy ¶ 4(c)(i).  See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark.  Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding that Respondent has not engaged in a bona fide offering of goods or services in connection with the domain names <surestore.com> and <surestore.net> when Respondent has an intention of selling the domain names).

There is no evidence presented that Respondent was known or is now commonly known as <mypc2call.com>, therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii).  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Respondent’s offer to sell the domain name is evidence that Respondent is not making a legitimate noncommercial or fair use of <mypc2call.com> and therefore, Respondent has not satisfied Policy ¶ 4(c)(iii).  See also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent, purporting to be a domain dealer, sent an e-mail to Complainant requesting that Complainant make a legitimate offer for the domain name in dispute.  This action by Respondent allows the Panel to make the inference that Respondent has acquired the domain name primarily for the purpose of selling the domain name registration to Complainant for valuable consideration in excess of out-of-pocket costs.  Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith as outlined in Policy ¶ 4(b)(i).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

Respondent has also used the disputed domain name in connection with offering Internet telephone services identical to Complainant’s website.  When a competitor uses a domain that is confusingly similar to Complainant’s mark, it can be presumed that the competitor has registered the domain name primarily for the purpose of disrupting Complainant’s business and therefore, Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Volkswagen of Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (transferring BAYAREAVW.COM from Respondent automobile dealership specializing in Volkswagens to Complainant); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring <fossilwatch.com> from Respondent watch dealer to Complainant); see also Nokia Corp. v. Uday Lakhani, D2000-0833 (WIPO Oct. 19, 2000) (transferring <nokias.com> from Respondent cellular phone dealer to Complainant); see also Gorstew Ltd. & Unique Vacations, Inc. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from Respondent travel agency to Complainants, who operate Sandals hotels and resorts).

Finally, by Respondent’s use of a domain that is confusingly similar to Complainant’s mark in connection with an aesthetically similar website that offers the same services as that of the Complainant, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source and sponsorship.  Therefore, the Panel finds that Respondent is acting in bad faith as outlined in Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s mark and offering the same chat services via his website as the Complainant). 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.

Accordingly, it is Ordered that the domain name <mypc2call.com> be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: February 21, 2002

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