DECISION

Alltel Corporation v. Martin Snytsheuvel

Claim Number:  FA0309000198029

PARTIES

Complainant is Alltel Corporation, Little Rock, AR (“Complainant”) represented by Anthony D. Scioli, of Kutak Rock LLP, 1650 Farman Street, Omaha, NE 68102-2186.  Respondent is Martin Snytsheuvel, 8900 Beach Front Drive, Las Vegas, NV 89117 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yellowpagesalltel.com>, registered with Register.Com.

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 September 25, 2003; the Forum received a hard copy of the Complaint on September 26, 2003.

On September 26, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <yellowpagesalltel.com> is registered with Register.Com and that Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com 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 September 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 2003 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@yellowpagesalltel.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 October 23, 2003, 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 makes the following assertions:

1. Respondent’s <yellowpagesalltel.com> domain name is confusingly similar to Complainant’s ALLTEL mark.

2. Respondent does not have any rights or legitimate interests in the <yellowpagesalltel.com> domain name.

3. Respondent registered and used the <yellowpagesalltel.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has used the mark, ALLTEL, in commerce in connection with the promotion, marketing and advertising of telecommunications services since 1930. Complainant registered its mark with the United States Patent and Trademark Office on February 25, 1985.  Complainant has used the domain name <alltel.com> since 1995.

Respondent registered the <yellowpagesalltel.com> domain name on October 25, 2002.  Respondent is using the disputed domain name to sell communications services.  On July 10, 2003, Complainant sent Respondent a cease-and-desist letter related to Respondent’s registration for use of the domain name.  Respondent replied to Complainant’s cease-and-desist letter with an offer to sell the disputed domain name to Complainant for a fee.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 established rights in the ALLTEL mark through registration with the USPTO and continuous use of the mark in commerce since at least 1930.

Respondent’s <yellowpagesalltel.com> domain name is confusingly similar to Complainant’s ALLTEL mark because it incorporates Complainant’s entire mark and merely adds the word  “yellow pages.”  Although “yellow pages” is a common word in English, its addition to Complainant’s mark does not prevent the mark from remaining the dominant feature of the disputed domain name.  In addition, the common word “yellow pages” has an obvious relationship with Complainant’s business.  Thus, the <yellowpagesalltel.com> domain name does not overcome a Policy ¶ 4(a)(i) confusingly similar analysis.  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

By offering services that compete with those of the Complainant, Respondent is not demonstrating a bona fide offering of good services pursuant to Policy ¶ 4(c)(i) or demonstrating a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).  By offering to sell the domain name to Complainant, Respondent is not demonstrating a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Am. Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a Barry, FA 143684 (Nat. Arb. Forum March 4, 2003) (stating that “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

Respondent has not come forward with any evidence to establish that it is commonly known as YELLOW PAGES ALLTEL or <yellowpagesalltel.com>.  Moreover, because of the fame of Complainant’s ALLTEL mark, Respondent would be hard pressed to establish that it is commonly known as the disputed domain name.  As a result, the Panel infers that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant has shown that Respondent has registered the domain name primarily for the purpose of selling the registration to Complainant and for valuable consideration in excess of out-of-pocket costs, therefore, in bad faith pursuant to Policy ¶ 4(b)(i).  Respondent also intended to sell the mark for valuable consideration in excess of out-of-pocket costs directly related to the domain name.  In his e-mail response to the Complainant’s cease and desist letter, Respondent requests payment for the domain name as well as payment to keep the requested transaction out of the news.  Referring to the Biblical story of David and Goliath, Respondent implies that his sale of the disputed domain name would vanquish Complainant: “…theres [sic] allot [sic] of value in a giant like alltel [sic] being concerned with DAVID.  Probably would make the news.  Theres [sic] value in that I assume as well.”  See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale).

It is unclear what “communications services” Respondent provides at the disputed domain name.  Nonetheless, given the fame of Complainant’s ALLTEL mark it can be inferred that Respondent had actual knowledge of Complainant’s mark when it registered the <yellowpagesalltel.com> domain name.  Registration of a domain name confusingly similar to Complainant’s mark, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(b)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Thus, 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 relief shall be GRANTED.

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

John J. Upchurch , Panelist

Dated:  November 4, 2003

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