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Generic Top Level Domain Name (gTLD) Decisions |
Tellabs, Inc. v. DomainAnchor
Claim
Number: FA0409000324730
Complainant is Tellabs, Inc. (“Complainant”), represented
by Charles Kennedy, of Tellabs, Inc., 1415
W. Diehl Road, MS16, Naperville, IL 60563.
Respondent is DomainAnchor (“Respondent”),
represented by John Oshodi, 301 S. Sherman, Ste. 117, Richardson, TX 75081.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <tellabspartner.com>, registered with Bulkregister,
Llc.
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.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 7, 2004; the
Forum received a hard copy of the
Complaint on September 9, 2004.
On
September 9, 2004, Bulkregister, Llc. confirmed by e-mail to the Forum that the
domain name <tellabspartner.com> is registered with Bulkregister,
Llc. and that Respondent is the current registrant of the name. Bulkregister,
Llc. has verified
that Respondent is bound by the Bulkregister, Llc. 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 13, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of October 4, 2004 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@tellabspartner.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 14, 2004, 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tellabspartner.com>
domain name is confusingly similar to Complainant’s TELLABS mark.
2. Respondent does not have any rights or
legitimate interests in the <tellabspartner.com> domain name.
3. Respondent registered and used the <tellabspartner.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Tellabs, Inc., owns registration rights for the TELLABS mark with the United
States Patent and Trademark Office (Reg.
No. 1,571,618, issued December 19,
1989). Complainant uses the TELLABS
mark in connection with telephone-related signaling and transmission products,
including digital systems
products, data communication products, and voice
transmission products. The Digital systems products comprise of digital
cross-connections,
voice transcoders, T1 Channel service units, and digital
echo cancellers
Respondent
registered the <tellabspartner.com> domain name on June 17, 2002
and is using the domain name to redirect Internet users to Respondent’s
commercial website, listing
Respondent’s products and contact information. Additionally, Respondent’s website displays
a banner promising a price quote for users interested in Respondent’s products
within
twenty-four hours.
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.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent is
using the <tellabspartner.com> domain name to redirect Internet
users to Respondent’s website, which lists Respondent’s line of products in
addition to Respondent’s
contact information with a banner stating Respondent’s
commitment to responding to price inquiries within twenty-four hours. Respondent’s use of a domain name that is
confusingly similar to Complainant’s TELLABS mark to mislead Internet users
interested in
Complainant’s products to Respondent’s commercial website is not
a use in connection with a bona fide offering of goods or services
pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb.
Forum May 6, 2003) (holding that
Respondent’s use of Complainant’s mark and the goodwill surrounding that mark
as a means of attracting Internet users
to an unrelated business was not a bona
fide offering of goods or services); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting
the domain names was to cause confusion with Complainant's
website and marks,
its use of the names was not in connection with the offering of goods or
services or any other fair use).
Furthermore,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <tellabspartner.com> domain
name. Thus, Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone
Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or
legitimate interests because Respondent is not commonly known by
the disputed
domain name or using the domain name in connection with a legitimate or fair
use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered the <tellabspartner.com> domain name for commercial
gain. Respondent’s domain name diverts
Internet users wishing to search under Complainant’s mark to Respondent’s commercial website through the use of a
domain name confusingly similar to Complainant’s mark. Respondent’s practice of diversion,
motivated by commercial gain, through the use of a confusingly similar domain
name evidences bad
faith registration and use pursuant to Policy ¶
4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s
well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also MathForum.com, LLC v. Weiguang Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent linked <drmath.com>, which contains
Complainant’s Dr.
Math mark, to a website run by Respondent, creating confusion for Internet
users regarding the endorsement, sponsorship,
of affiliation of the website); see
also Reuters Ltd. v. Global Net 2000,
Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created
confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <tellabspartner.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: October 28, 2004
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