Nextelcupcollectables.net

The timeline behind nextelcupcollectables.net

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 Nextel Communications Inc. v. Paul Langford Claim Number: FA0505000477061 PARTIES Complainant Nextel Communications Inc. (“Complainant”), is represented by Sherri N. Blount, of Morrison and Foerster, 2000 Pennsylvania Ave. NW, Suite 5500, Washington, DC 20006. Respondent is Paul Langford (“Respondent”), 5631 Elena Dr., Holiday, FL 34690. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <nextelcupcollectables.net>, registered with Go Daddy Software, Inc. PANEL The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding. Hon. Richard B. Wickersham, Hon. Tyrus R. Atkinson, Jr. and James A. Carmody, Esq., Chair, as Panelists. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 16, 2005. On May 16, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <nextelcupcollectables.net> 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 May 19, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 8, 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@nextelcupcollectables.net 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 June 15, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed the Hon. Richard B. Wickersham, Hon. Tyrus R. Atkinson, Jr. and James A. Carmody, Esq., as Panelists. 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 1. Respondent’s <nextelcupcollectables.net> domain name is confusingly similar to Complainant’s NEXTEL mark. 2. Respondent does not have any rights or legitimate interests in the <nextelcupcollectables.net> domain name at issue. 3. Respondent has registered and used the domain name at issue in bad faith. B. Respondent has failed to submit a Response in this proceeding. Accordingly, every reasonable factual assertion made by Complainant will be presumed to be true and not contested by Respondent. FINDINGS Complainant, Nextel Communications Inc., has used the NEXTEL mark in commerce since at least as early as 1988 in connection with wireless telecommunications services, including wireless telephones and wireless telephone accessories. Complainant is the owner of several registrations and pending applications with the United States Patent and Trademark Office (i.e., Reg. No. 1,637,139, issued March 5, 1991; Reg. No. 1,884,244, issued March 14, 1995; Reg. No. 2,358,982, issued June 20, 2000; Ser. No. 76/280,533, filed July 5, 2001). Additionally, Complainant has had a cross-license trademark agreement to use the NASCAR NEXTEL CUP mark in connection with wireless telephones, promotional items, and wireless accessories since as early as 2003. Complainant asserts that the <nextelcupcollectables.net> domain name is confusingly similar to Complainant’s NEXTEL mark because the domain name incorporates Complainant’s NEXTEL mark in its entirety with the addition of the generic words “cup” and “collectables.” Further, the addition of the generic top-level domain “.com,” is insufficient to distinguish the domain name from the mark, says Complainant. Complainant further contends that Respondent had prior constructive, if not actual, knowledge of Complainant’s rights in the NEXTEL mark. Complainant has used the mark for over fifteen years and has advertised the mark extensively throughout the United States and abroad. Complainant asserts that Respondent is not an authorized dealer of Complainant, and does not have Complainant’s permission to appropriate or use the NEXTEL mark to register domain names for any other purposes. There is no evidence that Respondent is commonly known by the domain name at issue. Respondent’s commercial use of the misleading domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). 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 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; (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 NEXTEL mark. See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration); see also 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 and has not done so. Complainant asserts that the <nextelcupcollectables.net> domain name is confusingly similar to Complainant’s NEXTEL mark because the domain name incorporates Complainant’s NEXTEL mark in its entirety with the addition of the generic words “cup” and “collectables.” A domain name that combines a generic term with a trademark does not eliminate the confusingly similar nature between the domain name and the mark. See Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000) (finding that “genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”); see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with Complainant’s registered mark L.L. BEAN does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (“Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant.”). The addition of the generic top-level domain “.com,” is insufficient to distinguish the domain name from the mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants."); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark). Complainant has established Policy ¶ 4(a)(i). Rights or Legitimate Interests Respondent is not commonly known by the domain name at issue and is not a dealer or licensee of Complainant. Pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights in the domain name. 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 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 domain name 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 Respondent’s commercial use of the misleading domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Respondent had prior constructive, if not actual, knowledge of Complainant’s rights in the NEXTEL mark. Complainant has used the mark for over fifteen years and has advertised the mark extensively throughout the United States and abroad. Complainant asserts that prior UDRP decisions support the conclusion that Respondent’s registration and use of the domain names constitutes bad faith due to Respondent’s actual or constructive knowledge of Complainant’s mark. See 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); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”). 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 <nextelcupcollectables.net> domain name be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Chair Hon. Tyrus R. Atkinson, Jr., Panelist Hon. Richard B. Wickersham, Panelist Dated: June 28, 2005 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

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