Hoponwireless.com

The timeline behind hoponwireless.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Hop-on Wireless, Inc. v. Tim Leach Claim Number: FA0502000414564 PARTIES Complainant is Hop-on Wireless, Inc. (“Complainant”), represented by Clay E. Gaetje, of The Law Offices of Robert T. Braun, 10810 Turnleaf Lane, Tustin Ranch, CA 92782. Respondent is Tim Leach (“Respondent”), 1600 Turquoise Drive, Carlsbad, CA 92009. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <hoponwireless.com>, registered with Go Daddy Software, Inc. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Sandra Franklin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 4, 2005. On February 3, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <hoponwireless.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 February 8, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 28, 2005 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@hoponwireless.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On March 6, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <hoponwireless.com> domain name is confusingly similar to Complainant’s HOP-ON WIRELESS mark. 2. Respondent does not have any rights or legitimate interests in the <hoponwireless.com> domain name. 3. Respondent registered and used the <hoponwireless.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant uses the HOP-ON WIRELESS mark in connection with cellular telephones, cellular telephone accessories, wireless telephones, wireless telephone accessories, electronic equipment including surveillance cameras and systems, and toys. Complainant has continuously used the mark in commerce since May 2001. Complainant filed a registration application for the HOP-ON WIRELESS mark with the U.S. Patent and Trademark Office (Ser. No. 78551810) on January 21, 2005. Respondent registered the <hoponwireless.com> domain name on April 4, 2001. The WHOIS page, which is dated January 20, 2004, lists Complainant’s employees as being the Administrative Contact, Technical Contact, and Zone Contact for the disputed domain name. Until approximately January of 2004, the disputed domain name pointed to Complainant’s parent company’s website located at <hop-on.com>. The record indicates that the website associated with the disputed domain name advertised that the domain name was for sale and for inquiries to be sent to tim@blu2.com. The website also contained various advertisements for GoDaddy.com, the registrar of the disputed domain name. On January 17, 2005, Complainant’s agent, Mr. Rigo Sauceda, made an anonymous inquiry to Respondent as to whether the domain name was for sale. Specifically, Mr. Sauceda stated, “Hi, I’m interested in purchasing the hoponwireless.com domain name and I wanted to know that the asking price for it is. Thanks!” Respondent responded to Mr. Sauceda, “Make me an offer with lots of zeros.” 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 Registered and unregistered trademarks and service marks are afforded protection under the Policy. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) noting that the ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy. In determining whether or not Complainant has rights in the HOP-ON WIRELESS mark, the Panel notes that Respondent failed to contest the allegations and the evidence contained within the Complaint. Due to Respondent's failure to submit a response, the Panel has chosen to view the Complaint in a light most favorable to Complainant, and will accept all reasonable allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do; see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a presumption that complainant's allegations are true unless clearly contradicted by the evidence. It is established under the Policy that a mere trademark application is not enough to establish rights in a mark, absent an issuance of registration or Notice of Allowance. In the instant case, Complainant has filed a registration application with the U.S. Patent and Trademark Office for the HOP-ON WIRELESS mark. Yet, the mark is still unregistered and a notice of allowance has not been issued. Therefore, Complainant’s trademark application is insufficient, standing alone, to establish rights in the mark pursuant to paragraph 4(a)(i) of the Policy. See Bar Code Disc. Warehouse, Inc. v. Barcodes, Inc., D2001-0405 (WIPO July 27, 2001) (“[A]n application for registration standing alone establishes neither rights nor presumptions.”); see also Royal Caribbean Cruises Ltd. v. Gold Anchor Serv., D2003-0443 (WIPO July 17, 2003) the panel found rights in a trademark only after Complainant filed an application with the United States Patent and Trademark Office and a notice of allowance had been granted. Distinctiveness is the threshold requirement for a valid trademark. Distinctiveness takes two forms. First, a mark may be inherently distinctive if its “intrinsic nature serves to identify a particular source.” See Two Pesos v. Taco Cabana, 505 U.S. 763, 768 (1992). Inherently distinctive marks include arbitrary, fanciful, or suggestive marks. Second, marks that are merely descriptive may be distinctive provided that, “in the minds of the public, the primary significance of [the mark] is to identify the source of the product rather than the product itself.” See Inwood Labs. v. Ives Labs., 456 U.S. 844, 851, n.11 (1982). In the instant case, the HOP-ON WIRELESS mark is used in connection with cellular telephones, cellular telephone accessories, wireless telephones, wireless telephone accessories, electronic equipment including surveillance cameras and systems, and toys. A single mark may be descriptive when used in connection with some goods or services, while being arbitrary, fanciful, or suggestive when used in connection with other goods or services. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 11-12 (2d Cir. 1976). “‘[S]uggestive’ trademarks require imagination, thought, or perception to link the trademark with the goods (e.g. ROACH MOTEL for insect traps); and "descriptive" trademarks merely describe the goods (e.g. YELLOW PAGES).” See Interstellar Starship Servs. v. Epix, Inc., 304 F.3d 936, 943 (9th Cir. 2002). The line separating suggestive and descriptive marks is often fuzzy and no bright line rule exists to classify when imagination stops and description begins. When used in connection with cellular telephones, Complainant’s HOP-ON WIRELESS mark merely brings to mind the act of jumping onto a different medium known as “wireless.” The wireless medium exists for a variety of technologies such as the Internet, telephones, navigation systems, etc. A further inference is required for a customer to conclude that the mark HOP-ON WIRELESS relates to cellular phones, and does not merely describe the goods. Therefore, the Panel concludes that the HOP-ON WIRELESS mark, when used in connection with cellular phones, is suggestive. In conjunction with the foregoing, and in light of the fact that Respondent has not refuted Complainant’s assertion of rights in the mark, the Panel concludes that Complainant has established rights in the HOP-ON WIRELESS mark. A domain name that contains a third-party mark in its entirety, with the exception of the removal of hyphens and spaces from the mark, has been found to be confusingly similar to the mark pursuant to paragraph 4(a)(i) of the Policy. In the instant case, the <hoponwireless.com> domain name contains Complainant’s HOP-ON WIRELESS mark in its entirety, but has simply removed the hyphen between the words “hop” and “on,” and has omitted the space between the terms “hop-on” and “wireless.” Consistent with prior decisions under the Policy, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to paragraph 4(a)(i) of the Policy. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“[T]he use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark."); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) ( “[The] addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen."); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark because the absence of the space is insignificant. Complainant has established Policy ¶ 4(a)(i). Rights or Legitimate Interests The fact that Respondent failed to respond to the Complaint is construed as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain name. 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; see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”). Respondent used Complainant’s employees’ contact information in the WHOIS registration information. Respondent then connected the disputed domain name to a website operated by Complainant’s parent company. However, Respondent was not authorized by Complainant to engage in these activities, or to use Complainant’s trademark in the disputed domain name. By acting in this manner, the Panel finds that Respondent was attempting to pass itself off as Complainant, which does not evidence a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) finding that as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name. For the reasons above, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy. See 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; see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the mark precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question. Complainant has established Policy ¶ 4(a)(ii). Registration and Use in Bad Faith As stated prior, Respondent used Complainant’s employees’ contact information in the WHOIS registration information and connected the disputed domain name to a website operated by Complainant’s parent company. Those two facts demonstrate that Respondent had actual knowledge of Complainant’s business, as well as Complainant’s rights in the HOP-ON WIRELESS mark at the time it registered the domain name. Such knowledge is evidence of bad faith registration and use pursuant to paragraph 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”. Moreover, the evidence indicates that Respondent registered the domain name primarily to sell the domain name registration to either Complainant, or a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket expenses directly related to the domain name. First, Respondent registered a domain name that is confusingly similar to Complainant’s mark. Second, Respondent registered the domain name by using Complainant’s employees’ contact information in the WHOIS registration information. Third, Respondent pointed the disputed domain name to Complainant’s parent company’s website. Fourth, in response to Complainant’s agent’s anonymous inquiry into the possible sale of the domain name registration, Respondent responded by stating, “Make me an offer with lots of zeros.” This evidence is sufficient to establish that Respondent registered and used the disputed domain name in bad faith pursuant to paragraph 4(b)(i) of the Policy. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“[T]he manner in which the Respondent chose to identify itself and its administrative and billing contacts both conceals its identity and unmistakably conveys its intention, from the date of the registration, to sell rather than make any use of the disputed domain name”); see also Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) stating that a Panel should not “put much weight on the fact that it was the Complainant who contacted Respondent to see if it was interested in selling the domain name”. Complainant has established Policy ¶ 4(a)(iii). 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 <hoponwireless.com> domain name be TRANSFERRED from Respondent to Complainant. Sandra Franklin, Panelist Dated: March 21, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.