Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Callcatchers, Inc. d/b/a Freedom Voice Systems, whose principal place of business is located in Encinitas, California, United States of America, and which is represented by John M. Carson of Knobbe, Martens, Olson & Bear, LLP, Irvine, California, United States of America.

The Respondent is Toll Free Numbers.com, C/O Mr. Bill Quimby of Ramsey, New Jersey, United States of America and 1800NumberSearch.com C/O Mr. Bill Quimby of Yonkers, New York, United States of America.

The disputed domain names, <freedomvoicesystem.com> and

<freedomvoicesystems.com> are registered with eNom, which is located in Redmond, Washington, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 6, 2002, by e-mail and on December 9, 2002, in hard copy. Also on December 6, 2002, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On December 10, 2002, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 the Respondent of the Complaint, and the proceedings commenced on December 10, 2002. In accordance with the Rules, paragraph 5(a), the due date for a response was December 30, 2002, but the Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 31, 2002.

The Center appointed Dennis A. Foster as the sole Panelist in this matter on January 7, 2003. The Panel finds that it was properly constituted. The Panel on January 6, 2003, had submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center in compliance with the Rules, paragraph 7.

- Under the name FreedomVoice Systems, the Complainant has engaged in the business of providing telephone communication services in the United States of America for a number of years.

- The Respondent is listed as the registrant of the disputed domain names. The record of registration was created on June 2, 2001, for the disputed domain name, <freedomvoicesystem.com>, and on May 14, 2002, for the disputed domain name, <freedomvoicesystems.com>.

- With the Complainant’s permission, the Respondent became a reseller of the Complainant’s services prior to the first registration referred to above.

- The Complainant has provided telephone communication and voice telephone communication services under the trademark, "FreedomVoice Systems", since January 1996. The Complainant’s mark is arbitrary and distinctive.

- The Complainant offers its services through a variety of channels, including direct sales, over the Internet (i.e., the Complainant owns the domain names, <freedomvoice.com> and <fvsystems.com>) and via a network of resellers. Those resellers are independent contractors that generate commissions based on services sold.

- In March 2001, the Respondent became a reseller of the Complainant’s services.

- In June 2001, the Respondent inquired about the possibility of registering a domain name that incorporated part or all of the Complainant’s trademark. The Complainant replied with a June 6, 2001, e-mail message explaining to the Respondent that, although the Complainant was permitting distributors who had previously registered domain names incorporating some portion of the Complainant’s trademark to retain their registrations, new reseller registrations using the mark were not allowed now by the Complainant.

- In June 2001, Respondent registered the disputed domain name, <freedomvoicesystem.com>, without the Complainant’s permission, and by at least December 2001, was conducting resale activities under that name as well as other domain names. Additionally, in May 2002, the Respondent registered the disputed domain name, <freedomvoicesystems.com>, without permission.

- In August 2002, the Respondent terminated his status as one of the Complainant’s resellers. Since at least September 2002, the Respondent has been operating the disputed domain names to offer other services which compete directly with the Complainant’s services.

- The disputed domain names are identical or similar to a trademark in which the Complainant has rights.

- The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent’s status as a reseller does not allow it the right to use the Complainant’s trademark in its domain names, and the Respondent is unfairly trading on the good will created in the mark by the Complainant.

- As made clear by the contentions noted above, the Respondent registered and is using the disputed domain names in bad faith.

The Respondent did not file a response in this proceeding.

- In accordance with paragraph 15(a) of the Rules, the Panel is instructed to "decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

- Pursuant to paragraphs 4(a)(i) through (iii) of the Policy, the Complainant may prevail in these proceedings and be awarded the disputed domain names if the Complainant can prove the following:

- the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

- the disputed domain names were registered and are being used in bad faith.

To satisfy the requirements of the Policy under paragraph 4(a)(i), the Complainant must first establish that it has rights to a trademark or service mark to which the disputed domain names are identical or confusingly similar. In this case, the Complainant has not alleged that it owns a registered trademark or service mark in the name, "FreedomVoice Systems."

However, previous panels operating under the Policy have allowed Complainants to establish rights in trademarks through common law considerations. See for example United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case No. D2002-0005 (March 27, 2002) and Meijer, Inc. v. Porksandwich Web Services, NAF Case No. 97186 (July 6, 2001). Panels have typically recognized common law rights if a Complainant could show that it operated using the mark in question in a sufficient manner to cause it to become identifiable with Complainant’s goods or services to the exclusion of others, i.e., "secondary meaning."

In this case, beyond the Complainant’s simple declarative statement that "Complainant’s mark is an arbitrary mark that is strong and distinctive", the Complainant has provided the Panel with scant direct evidence to support a finding that such a secondary meaning has attached to its name, "FreedomVoice Systems." Despite this lack of direct evidence, the Panel notes that the Respondent’s own actions in choosing to register and use the disputed domain names as a conduit to resell the Complainant’s services is in itself substantial evidence that the name, "FreedomVoice Systems", is sufficiently identified with the Complainant’s services as to grant the Complainant common law trademark rights in that name.

As can be inferred from the reasoning above, the Panel also finds that the disputed domain names, <freedomvoicesystem.com> and <freedomvoicesystems.com>, are both either identical or confusingly similar to the Complainant’s trademark. The differences between the mark and the names (i.e., the exclusion of the space between the trademarked words in the names, the deletion of the last "s" in the first name and the addition of the gTLD, ".com", to both names) are trivial and thus inconsequential in making this determination. See Laerdal Medical Corporation v. Locks Computer Supply, WIPO Case No. D2002-0063 (April 18, 2002) and Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF Case No. FA95856 (December 18, 2000).

Accordingly, the Panel concludes that the Complainant has satisfied its burden of proof in establishing that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has admitted that it gave the Respondent permission to resell its services. Noting that, prior to June, 2001, the Complainant allowed its distributors to register domain names containing its trademark (see Annex E to the Complaint), the Panel concludes that such permission also extended to using the Complainant’s trademark for those resale activities. Since the Complainant also admits that it commonly uses the Internet to sell its services, it must certainly have expected the Respondent to also use the Internet for resale.

Thus, although the Respondent has not filed a response in which it has cited as a defense in these proceedings paragraph 4(c)(i) of the Policy, which provides that the Respondent may establish its rights or legitimate interests in the disputed domain names by furnishing evidence that "before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services", the Panel must consider the applicability of that paragraph to this case.

Clearly, as admitted in the Complaint, the Respondent has used the disputed domain names in connection with an offering, namely the permitted resale of the Complainant’s services. That offering would appear to be "bona fide" given the permission and expectations referred to above. The Complainant disagrees, contending that such use is not bona fide or legitimate because, in its June 6, 2001, e-mail message to the Respondent (see Annex E to the Complaint), the Complainant specifically informed the Respondent that its use of any domain name incorporating Complainant’s trademark was disallowed by the Complainant.

The Panel finds several problems with Complainant’s argument. First, although not clarified for the Panel in the main body of the Complaint, the Respondent’s registration of the domain name, <freedomvoicesystem.com>, occurred on June 2, 2001, (see Annex B to the Complaint), four days before the Complainant’s e-mail message. Therefore, since the e-mail itself seems to indicate that the policy against use of the Complainant’s trademark in distributor’s domain names was relatively recent, the Complainant can hardly claim that the Respondent acted initially and illegitimately against the Complainant’s express wishes.

However, the more fundamental weakness in Complainant’s argument is that it asks the Panel to decide this case on contractual terms without supplying the Panel, at a minimum, with an executed document governing the resale relationship between the Complainant and the Respondent. Certainly, the Complainant is allowed to condition the licensed use of its trademark, including the disallowance of the mark in domain names used by its licensees. But to prevail in this proceeding, the Complainant must furnish the Panel with clear evidence that this is the case. The job of the Panel under the Policy is to address abusive domain name registration and use (see Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774 (October 26, 2002)), not to engage in an in-depth determination of possibly complex contractual rights based on ambiguous e-mail messages and unsupported assertions.

Per the above, the Panel concludes that the Complainant has failed to carry its burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain names.

Since the Complainant must prevail on each of the three separate criteria listed in paragraph 4(a) of the Policy to be successful in this proceeding, it is unnecessary for the Panel to consider in this case whether the Complainant has met its burden of proof with respect to paragraph 4(a)(iii) of the Policy, i.e., whether the disputed domain names were registered and are being used in bad faith.

Since the Complainant has failed to carry its burden in proving that the Respondent has no rights or legitimate interests in the disputed domain names, the Complaint is denied and, pursuant to paragraph 4(a) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name <freedomvoicesystem.com> remain registered with Respondent 1800NumbersSearch.com, and that <freedomvoicesystems.com> remain registered to Respondent Toll Free Numbers.com.