Nortel Networks Limited; Nortel Networks NA Inc. v. FastWrite; FastWrite Asia Co. Ltd.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Nortel Networks

Limited and Nortel Networks NA Inc. v. FastWrite

Asia Co. Ltd. and FastWrite

Case No.

D2000–1119

1. The

Parties

The Complainants in

this administrative proceeding are, respectively, Nortel Networks Limited,

a Canadian corporation with its principal place of business at World Trade

Center of Montreal, 380 St. Antoine Street West, 8th Floor, Montreal,

Quebec, Canada H2Y 3Y4 and Nortel Networks NA Inc., a Delaware corporation

with its principal place of business at 4401 Great American Parkway, Santa

Clara, California, USA represented by Finnegan, Henderson, Farabow, Garrett

& Dunner, LLP, of 1300 1 Street, NW, Washington, DC 20005-3315,

USA.

The Respondents are

FastWrite Asia Co. Ltd., with an address at Avenue Henri Durant, 4

Bte 58, Brussels, Bt 1140, Belgium and FastWrite, with an address at Rue

A. Bracke, 9, Kraainem, Bt 1950, Belgium.

2. The Domain Names

and Registrar

The domain names in

issue are <mynortelnetworks.com> and <mybaynetworks.com> ("the

Domain Names"), the Registrar of which is Network Solutions, Inc. of

505 Huntmar Park Drive, Herndon, VA 20170, USA ("Network Solutions").

3. Procedural History

The WIPO Arbitration

and Mediation Center ("the Center") received on August 24, 2000,

an electronic version of the Complaint and accompanying documents and on

August 28, 2000, a hard copy version of the same. The Center verified

that the Complaint satisfies the formal requirements of the ICANN Uniform

Domain Name Dispute Resolution Policy ("the Policy"), and the

Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules").

The Complainant made the required payment to the Center. On September 18,

2000, the Center formally notified the Respondent that this administrative

proceeding had been commenced, and that date is the formal date of the commencement

of this administrative proceeding.

On August 29, 2000,

the Center transmitted via e-mail a request for registrar verification in

connection with this case. On August 31, 2000, Network Solutions transmitted

via e-mail to the Center a Verification Response, confirming that the registrant

of the domain name <mynortelnetworks.com> is the First Respondent

herein, and stating that the administrative and billing contact is Stéphane

Juseret at the above address of the First Respondent. On December 15, 2000

Network Solutions confirmed that the registrant of the domain name <mybaynetworks.com>

is the Second Respondent and that the administrative and billing contact

is Pat Boens, FastWrite (at the Second Respondent’s above address).

No formal Response

has been filed by the Respondents, but by a letter dated October 10, 2000,

apparently signed by Stéphane Juseret as Manager of FastWrite Asia Co.

Ltd. and by Patrick Boens as Managing Director of FastWrite Belgium the

Respondents agreed to transfer the Domain Names to the Complainants.

On December 5, 2000,

this Panelist was appointed by the Center. The Panelist has filed a Statement

of Acceptance and Declaration of Impartiality, and his decision was scheduled

to be forwarded to the Center by December 18, 2000.

4. Factual Background

(a) The First

Complainant is the proprietor of a number of United States Trademarks

including:

(i) Registration

Number 2184321 for the mark NORTEL and Design

(ii) Registration

Numbers 1980303 and 2001714 for the mark NORTEL

(iii) Application

No. 75/544171 for the mark NORTEL NETWORKS

(b) The Second

Complainant is the registered proprietor of U.S. Trademarks Nos. 2019659

and 2044256 for the mark BAY NETWORKS.

5. Parties’ Contentions

A. Complainants

The Complainants set

out in their Complaint a full case against the Respondents, which in the

light of the agreement referred to above, the Panelist does not propose

to recite here.

B. Respondents

As indicated above,

the Respondents have submitted no formal Response, but have agreed to transfer

the Domain Names. However, Network Solutions have apparently not been able

to act on that agreement and effect the desired transfers without notarial

certification of the signatures of Stéphane Juseret and Patrick Boens.

There have been problems in securing such notarization.

6. Discussion and

Findings

In the light of the

problems referred to in the previous paragraph, this Panelist has been asked

to give effect to the intentions of the parties. This raises the question

whether the Panel has power under the Policy to order the transfer of a

domain name to a complainant on the simple basis of the bare consent of

the respondent. Under the Policy, paragraph 3 lists three circumstances

under which a Registrar will, inter alia, transfer a domain name

registration. Only para. 3(c) is applicable to an Administrative Panel:

"c. our receipt

of a decision of an Administrative Panel requiring such action in any

administrative proceeding to which you were a party and which was conducted

under this Policy or a later version of this Policy adopted by ICANN".

For an administrative

proceeding to be "conducted under this Policy" it must be one

that complies with paragraph 4(a) of the Policy. In particular:

"In the administrative

proceeding, the complainant must prove that each of these three elements

are present."

In any event having

considered the Complaint, the Panelist has no difficulty in finding that

all three of the elements set out in paragraph 4(a) of the Policy have been

proved to be present in this case. Further, in view of the Respondents’

consent to transfer it is unnecessary to particularize how the elements

of paragraph 4(a)(ii) and (iii) of the Policy have been proved to the Panelist’s

satisfaction.

7. Decision

In the light

of the findings in paragraph 6 above, the Panelist concludes that:

- the domain

name <mynortelnetworks. com> is confusingly similar to the trademark

NORTEL NETWORKS of the First Complainant;

- the domain

name <mybaynetworks.com> is confusingly similar to the trademark

BAY NETWORKS of the Second Complainant;

- the Respondents

have no rights or legitimate interests in the Domain Names;

- the Domain

Names have been registered and are being used in bad faith.

Accordingly,

the Panelist orders that:

- the domain

name <mynortel networks.com> be transferred to the First Complainant

NORTEL NETWORKS LIMITED; and

- the domain

name <mybaynetworks.com> be transferred to the Second Complainant

NORTEL NETWORKS NA INC.

Christopher

Tootal

Presiding Panelist

Dated: December

21, 2000