DECISION

IDT Corporation, IDT Netherlands, B.V. and Union Telecard Alliance, LLC v. Rohit Krishan d/b/a Callingcards.com

Claim Number: FA0310000206315

PARTIES

Complainants are IDT Corporation, IDT Netherlands, B.V. and Union Telecard Alliance, LLC (collectively, “Complainant”) represented by Jennifer Mikulina of McDermott, Will & Emery, 277 West Monroe, Suite 4400, Chicago, IL, 60606. Respondent is Rohit Krishan d/b/a Callingcards.com (“Respondent”) represented by George E. Bullwinkel, 19 South LaSalle Street, Suite 1300, Chicago, IL, 60603-1493.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <idtcallingcards.com>, <idtcallingcard.com>, <idtphonecard.com>, <idtphonecards.com>, <unioncallingcard.com>, <unioncallingcards.com> and <unionphonecards.com> registered with Intercosmos Media Group, Inc. d/b/a Directnic.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 October 28, 2003; the Forum received a hard copy of the Complaint on October 28, 2003.

On October 31, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain names <idtcallingcards.com>, <idtcallingcard.com>, <idtphonecard.com>, <idtphonecards.com>, <unioncallingcard.com>, <unioncallingcards.com> and <unionphonecards.com> are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 November 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 24, 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@idtcallingcards.com, postmaster@idtcallingcard.com, postmaster@idtphonecard.com, postmaster@idtphonecards.com, postmaster@unioncallingcard.com, postmaster@unioncallingcards.com and postmaster@unionphonecards.com by e-mail.

A timely Response was received and determined to be complete on November 24, 2003.

Complainant filed an Additional Submission on December 1, 2003 and a second Additional Submission on January 5, 2004 as requested by the Panel in its order of December 15, 2003.

On December 2, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1.   The domain names are confusingly similar to Complainant’s marks.

2.   Respondent has no right or legitimate interest in the domain names.

3.   The domain names were registered in bad faith.

B. Respondent

1.   Respondent does not deny that Complainant holds trademark rights in the IDT mark, but argues that such three-letter combinations are capable of other meanings.

2.   Complainant has no rights in the terms “union,” “calling cards” and “phone cards” because the terms are generic.

3.   The domain names were not registered in bad faith.

FINDINGS

The panel finds for Complainant and against Respondent.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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 produced evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the IDT mark, including Reg. No. 2,118,811 (registered on December 9, 1997) in relation to telephone communication services. The Panel finds that Complainant’s trademark registrations with the USPTO establish Complainant’s rights in the IDT mark. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

Complainant has provided evidence of use of the UNION mark in connection with its goods and services on its website. The Panel finds that Complainants has established rights in the UNION mark under Policy ¶ 4(a)(i). See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Complainant contends that Respondent’s <idtcallingcards.com>, <idtcallingcard.com>, <idtphonecard.com>, <idtphonecards.com>, <unioncallingcard.com>, <unioncallingcards.com> and <unionphonecards.com> domain names are confusingly similar to Complainant’s IDT and UNION marks because the disputed domain names appropriate one of Complainant’s marks and add generic or descriptive terms such as “calling,” “phone” and “card” to the end of the mark. The Panel finds that the addition of said generic or descriptive terms does not sufficiently differentiate the domain names from the marks pursuant to Policy ¶ 4(a)(i) because the added terms directly relate to Complainant’s business. See 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); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Rights or Legitimate Interests

Respondent registered the disputed domain names between March 2, 2001 and February 25, 2002. Respondent has not linked the domain names to an active website. The Panel finds that, based on Respondent’s failure to use the domain names, Respondent is passively holding the names, which demonstrates neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

Furthermore, the only use Respondent has made of the disputed domain names is to offer two or three of the domain names for sale to Complainant. The Panel concludes that Respondent’s sole use of the domain names to offer to sell the names to Complainant suggests that Respondent has no rights to or legitimate interests in the domain names. See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); 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).

The Panel finds that there is no evidence in the record that Respondent is commonly known by any of the disputed domain names except for Respondent’s self-serving assertion that the letters “IDT” stand for “Indian Desi Telecom.” The Panel finds that Respondent has failed to establish any rights to or legitimate interests in the disputed domain names with regard to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Registration and Use in Bad Faith

Based on Respondent’s offer to sell two or three of the disputed domain names to Complainant for $5,000, the Panel finds that Respondent registered the domain names primarily for the purpose of selling the domain name registrations to Complainant for valuable consideration in excess or Respondent’s out-of-pocket costs, which is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where Respondent offered the domain names for sale).

Moreover, the Panel may find that Respondent’s registration of the <idtcallingcards.com>, <idtcallingcard.com>, <idtphonecard.com>, <idtphonecards.com>, <unioncallingcard.com>, <unioncallingcards.com> and <unionphonecards.com> domain names establishes a pattern of preventing Complainant from reflecting its marks in corresponding domain names, which evidences registration and use in bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith).

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 <idtcallingcards.com>, <idtcallingcard.com>, <idtphonecard.com>, <idtphonecards.com>, <unioncallingcard.com>, <unioncallingcards.com> and <unionphonecards.com> domain names be TRANSFERRED from Respondent to Complainant.

John J. Upchurch , Panelist
Dated: January 20, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/57.html