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VoiceStream Wireless Corporation v. Salem Zeto dba Pacific Wireless Communications

WIPO Case No. D2002-0313

Outcome
Transfer
Domain names
prepaidvoicestream.com
Complainant
VoiceStream Wireless Corporation
Respondent
Salem Zeto dba Pacific Wireless Communications
Panelist
James H. Grossman
Decided
13 Jun 2002
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-0313.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VoiceStream Wireless Corporation

v.

Salem Zeto, d/b/a/ Pacific Wireless Communications, d/b/a/ prepaidcellularwide.com

Case No. D2002 - 0313

1. The Parties

The Complainant is VoiceStream Wireless Corporation, a Delaware corporation,

with its principal place of business being 12920 SE 38th Street,

Bellevue, Washington 98006, United States of America ("VoiceStream").

The Respondent is Salem Zeto, d/b/a/ Pacific Wireless Communications,

d/b/a/ prepaidcellularwide.com of National City, California, United States

of America ("Zeto").

2. The Domain Name and Registrar

The domain name upon which this Complaint is based is <prepaidvoicestream.com>

(the "Domain Name"). The Registrar of the Domain Name as at the

date of the Complaint is BulkRegister.com, Inc. whose address is 10 East Baltimore Street,

Suite 1500, Baltimore, MD 21202, United States of America ("BulkRegister.com").

3. Procedural History

The Complaint was received on April 2, 2002, by email and in

hardcopy on April 5, 2002, by the WIPO Arbitration and Mediation

Center ("WIPO Center"). The WIPO Center has determined that the

Complaint satisfies the formal requirements of the Uniform Domain Name Dispute

Resolution Policy (the "Policy") approved by the Internet Corporation

for Assigned Names and Numbers on October 24, 1999. Further, the

WIPO Center has verified that the Complaint also satisfies the formal requirements

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

as well as the Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy (the "Supplemental Rules"), which such rules implement

the Policy. Payment to the WIPO Center in the required amount was made by

the Complainant.

On April 11, 2002, the WIPO Center notified BulkRegister.com that the Complaint

had been filed. In response to a number of questions, BulkRegister.com confirmed

to the WIPO Center, inter alia, the domain name was registered with

BulkRegister.com, the Respondent was the registrant of the domain name at

issue, the Policy applies to the dispute at issue, and that the language

of the registration agreement and hence the dispute is English.

In accordance with Paragraph 2 (a) of the Rules, the WIPO Center notified

the Respondent on April 18, 2002, of the filing of the Complaint

and the commencement of the Administrative Proceeding. This notice advised

the Respondent that Respondent had until May 8, 2002, to respond

to the Complaint. No response was received on or before May 8, 2002,

nor, to the knowledge of the Panel, has any response been received as of

the date of the filing of this Administrative Decision. On May 13, 2002,

the WIPO Center notified the Respondent of its failure to comply with the

deadline for responding to the Complaint and that Respondent was in default

in this case.

On May 30, 2002, the WIPO Center transmitted the case to the Administrative

Panel consisting of a single member, James H. Grossman of San Francisco,

California, United States of America. The panelist submitted a Statement

of Acceptance and Declaration of Impartiality and Independence in accordance

with the Rules and agreed to forward a decision in accordance with Paragraph

15 of the Rules on or before June 13, 2002.

Except for the Complaint referred to above, there have been no additional

submissions by either party.

4. Factual Background

The following is asserted as fact by the Complainant and remains uncontested.

Complainant is one of the largest providers of wireless voice and data

communication in the United States, operating in 37 states, serving 6.3

million subscribers, and with revenues in fiscal 2001 of more than 3.3 billion

US Dollars.

Complainant, since its founding in 1996, has used the VoiceStream trademark

(the Mark") both to identify its goods and services and as the name

of the company. The Mark first used in commerce in February, 1996, and first

registered on March 11, 1997, is the subject of eleven trademark

registrations issued by the U.S. Patent and Trademark Office with an additional

eleven applications pending in the U.S. relating to the Mark. Accordingly,

it is the contention of Complainant that the Mark has become a "famous

and highly distinctive trademark."

Complainant has provided evidence that Respondent registered the Domain

Name on September 13, 2001. On or about November 12, 2001,

Complainant became aware of a web site accessible via the Domain Name. According

to Complainant, the web site contained no information or disclosures revealing

Respondent’s ownership of the site, but rather incorporated extensive content

clearly indicating that the site was owned and operated by Complainant.

Further, the web site incorporated a hot link redirecting a user to another

Respondent web site entitled <prepaidcellurlarnationwide.com>.

On November 14, 2001, Complainant by certified letter demanded that Respondent

by November 23, 2001, terminate his unauthorized marketing and

sale of Complainant owned products and services and terminate use of the

Domain Name and all use of Complainant’s trademarks and service marks.

Thereafter, a series of written and oral communications took place between

the parties and/or their representatives resulting in Respondent’s making

some concessions; however, by March 2002 Respondent not only refused to

discuss any settlement relating to continued use of the Domain Name, but

also the Domain Name site advised that the Domain Name was "available"

and featured a "For Sale" sign and other information demonstrating

Respondent’s intent to sell the Domain Name.

5. Parties Contentions

A. Complainant

Complainant argues that the Domain Name should be transferred to Complainant

because all of the three elements required by Paragraph 4 (a) of the Policy

are present, namely, (i) Respondent’s Domain Name is "identical or

confusingly similar to a trademark…in which Complainant has rights;"

(ii) Respondent has "no rights or legitimate interests in respect of

the Domain Name;" and (iii) Respondent’s Domain Name has "been

registered and is being used in bad faith."

Complainant states that the Domain Name includes the Mark verbatim and

that Respondent has sought to profit from Complainant’s substantial investment

in its trademark and reputation. Further, since the Mark has a certain goodwill,

Respondent has effectively sought to reduce that goodwill by registering

the Domain Name in order to confuse consumers. Respondent’s attempt to sell

the Domain Name when challenged by Complainant is further evidence of bad

faith.

B. Respondent

Respondent failed to file any response to Complainant’s allegations.

6. Discussion and Findings

With regard to the issue of whether the Domain Name is identical or confusingly

similar to Complainant’s trademarks, the Panel takes notice of the fact

that the Domain Name incorporates in its entirety a distinctive trademark

and as such creates sufficient similarity between the trademark and the

domain name to render it confusingly similar. The Panel is of the view that

Respondent was clearly relying on consumer confusion to increase the number

of "hits" on its site and, thereafter, through the hotlink, converting

those consumers to the sale of an alternative product. The Panel finds that

the Complainant has proven Paragraph 4 a.(i) of the Policy.

Paragraph 4 c. of the Policy explains how a Respondent can demonstrate

its rights to and legitimate interests in the Domain Name. While Respondent

in this case has failed to make any response, Complainant has set forth

persuasive arguments to the effect that Respondent certainly had constructive

notice - if not actual notice - of Complainant's Mark and that Respondent

was more likely using a form of bait and switch advertising to obtain the

eyes of the consumer and then switch that consumer through the hotlink to

another site and another product. The Panel finds that the Complainant has

proven Paragraph 4 a. (ii) of the Policy.

The Panel agrees with Complainant's contention that the Respondent has

registered and is using the Domain Name in bad faith based on Paragraph

4 b.(iv) in that Respondent has done everything possible to create confusion

with regard to the Mark as to its source, sponsorship, affiliation or endorsement

of Respondent’s web site or location. Customers would reasonably believe

that Respondent was in some business arrangement with Complainant and the

web site using the Domain Name had the blessings of Complainant. The use

of the hotlink to move consumers elsewhere as well as the attempt to sell

the Domain Name when Respondent had run out of excuses for failing to cease

usage of the Domain Name can only be explained as a party acting in bad

faith.

7. Decision

The Panel has found that all of the requirements of Paragraph 4 of the

Policy have been proven by the Complainant. The Panel has also taken notice

that Respondent failed to respond to the Complaint and is thus in default.

Accordingly, in accordance with the remedy provided in Paragraph 4 i. of

the Policy, the Panel requires that the domain name <prepaidvoicestream.com>

be transferred from Respondent to the Complainant.

James H. Grossman

Sole Panelist

Dated: June 13, 2002

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