The Complainant is Telephone and Data Systems, Inc. of Chicago, Illinois, United States of America, represented by Sidley Austin LLP, United States of America.
The Respondent is TDS Holdings of Alpharetta, Georgia, United States of America.
The disputed domain name <tdswireless.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2010. On August 24, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 25, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2010. The Respondent communicated with the Center but did not submit any response. Accordingly, the Center notified the Respondent’s default on September 27, 2010.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 7, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is a Delaware corporation founded in 1969 and headquartered in Chicago, Illinois, United States of America. The Complainant’s subsidiaries provide telecommunications and broadband services in the United States to more than seven million customers. The Complainant is listed among the Fortune 500 companies, and its stock is traded on the New York Stock Exchange. Employing some 12,400 persons, the Complainant generated revenues of USD 5 billion in 2009. The Complainant operates a corporate website at “www.teldta.com” and owns nearly 300 domain names incorporating its TDS initials and mark, such as <tdstelecom.com>, which is associated with the Complainant’s customer service website.
The Complainant owns several registered United States trademarks featuring the initials “TDS”:
MARK | REGISTRATION NO. | REGISTRATION DATE |
|
TDS (and design) |
1098347 |
Aug. 1, 1978 |
|
TDS TELECOM |
2087371 |
Aug. 12, 1997 |
|
TDS METROCOM |
2258553 |
July 6, 1999 |
|
TDS TELECOM |
2271412 |
Aug. 24, 1999 |
|
TDS (and design) |
2893412 |
Oct. 12, 2004 |
|
TDS TV |
3137101 |
Aug. 29, 2006 |
|
TDS |
3671717 |
Aug. 25, 2009 |
The Domain Name was registered on March 25, 2010 in the name of the Respondent, showing a manifestly fabricated postal address (“1234 non of ya”) in Alpharetta, Georgia and a “sladeinvestments” email address. The Domain Name resolves to a website consisting of a single page that does not mention the Respondent but advertises a wireless communications service, Clear, that competes directly with the Complainant’s wireless services. The page displays the CLEAR logo and the words “Authorized Online Retailer”. Following excerpts from several “CLEAR Internet Reviews”, the page displays a toll-free contact telephone number.
The Complainant’s representatives sent the Respondent a cease-and-desist letter on June 4, 2010 but received no reply. After the Complaint was filed in this proceeding, Ms. Karen Slade of Slade Investments corresponded with the Center, as described below, and asserted ownership of the Domain Name.
The Complainant contends that the Domain Name is confusingly similar to its TDS marks and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant asserts that the Domain Name was registered and used in bad faith, in an attempt to mislead consumers familiar with the TDS marks and divert them for commercial gain to the Respondent’s website selling a competing wireless service.
The Respondent did not submit a formal Response, but in an email to the Center dated September 3, 2010, Ms. Karen Slade of Slade Investments stated as follows:
“We own the domain name TDSwireless.com we were unaware of TDS communications and its affiliate companies. We started a small local service to sell home and internet service in a 30 mile radius in Atlanta GA. However if TDS Communications would like to purchase the domain name we will be open to sell it and resolve the site for future business.”
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant unquestionably holds registered TDS marks. Those letters are incorporated in their entirety in the Domain Name. The addition of the generic word “wireless” does not eliminate the likelihood of initial confusion or association with the Complainant’s TDS marks, especially since the Complainant uses hundreds of domain names comprising those initials and one or more descriptive words, and the word “wireless” is in fact descriptive of a major portion of the Complainant’s communications business.
The test for confusing similarity typically applied under the first element of the Policy is generally regarded by panels these days as being a “low threshold” test, approached in the context of a “standing” requirement, under which the panel may consider whether there is “sufficient similarity” between the disputed domain name and the relevant trademark to warrant movement to consideration of the merits of the case under subsequent elements of the Policy. See, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227 and Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. Panels have also generally recognized that the combination of a trademark and a dictionary term in a disputed domain name would usually be insufficient to avoid a finding of confusing similarity under the first element of the Policy. In the present case, with a combination of the TDS mark and the dictionary term “wireless”, which is also descriptive of the Complainant’s area of business, that is indubitably so.
The Panel finds, therefore, that the Domain Name is confusingly similar to the Complainant’s marks for purposes of the Policy, paragraph 4(a)(i).
It is undisputed that the Complainant has not authorized the Respondent to make use of the TDS marks in the Domain Name or otherwise. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The website associated with the Domain Name is clearly commercial, but the Panel has considered, in the absence of a Response, whether the record supports a finding of rights or legitimate interests under paragraphs 4(c)(i) or (ii) of the Policy.
The Complaint attaches a Georgia Certificate of Organization and Articles of Organization dated July 21, 2009 for TDS Holdings L.L.C., a limited liability company in Atlanta, Georgia for which Ms. Slade is shown as the registered agent. Ms. Slade communicated with the Center following notice of the Complaint in this proceeding and claimed ownership of the Domain Name. Although her email messages do not elaborate on her relationship with the Respondent, it appears likely from the available record that the Respondent, which is the registrant as shown in the registrar’s WhoIs database, is identical with TDS Holdings L.L.C., and further that Ms. Slade has an interest in this company. In her initial email to the Center, Ms. Slade denied prior knowledge of the Complainant and stated that “[w]e started a small local service to sell home and internet service” in the Atlanta area. Since the Respondent did not reply to the Complainant’s cease-and-desist letter or submit a Response in this proceeding, there is no further explanation of the Respondent’s business and its interest in the Domain Name.
The fact that the Respondent appears to have been organized under Georgia law in 2009 under the name “TDS Holdings” is insufficient to establish that the Respondent has been “commonly known by the domain name or a name corresponding to the domain name” for purposes of the Policy, paragraph 4(c)(ii). There is no evidence in the record of operations, sales, or advertising under that name. The website associated with the Domain Name advertises CLEAR wireless Internet services and does not mention “TDS Holdings” or any business or service called “TDS Wireless.”
The Respondent’s organization as a limited liability company in 2009 conceivably might be viewed as evidence of “demonstrable preparations” before this dispute arose to use a name corresponding to the Domain Name (at least the “TDS” portion of the Domain Name) in connection with a bona fide offering of goods or services, within the meaning of the Policy, paragraph 4(c)(i). However, there is no evidence in this proceeding that the Respondent has actually traded under a name corresponding to the Domain Name or has done anything in preparation for commercial activity under the names “TDS Holdings” or “TDS Wireless.” Instead, the Domain Name has been used only to bring Internet users to a website advertising the services of Clear, a direct competitor of the Complainant, and the record does not even establish the Respondent’s reseller relationship, if any, with Clear. This is insufficient to demonstrate preparations to make commercial use of a name corresponding to the Domain Name.
Moreover, if it appears probable that the Domain Name was chosen to exploit the Complainant’s well-established TDS marks, a point discussed further below, that could not be considered a use in connection with a bona fide commercial offering. The Panel subscribes to the reasoning of an oft-cited, early UDRP decision, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847: “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. . . . [T]o conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing (as it has in this case). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent has not done so in this proceeding, and the Panel finds, therefore, that the second element of the Complaint is well founded.
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evincing bad faith in the registration and use of a domain name, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant is a large, publicly traded company with registered and long-established TDS marks, and its offerings include wireless services in the Atlanta, Georgia area where the Respondent is located. It is a reasonable assumption that the Respondent, which used the Domain Name only to advertise the services of a direct competitor in the wireless industry in Atlanta, was aware of the Complainant and intended to trade on its reputation in the manner described in paragraph 4(b)(iv) of the Policy.
Ms. Slade, in an email to the Center, denied prior knowledge of the Complainant. She did not explain her authority to speak for the Respondent, and the Panel notes that her statement was not made in a Response accompanied by the mandatory certification of accuracy (see Rules 5(b)(viii)). Thus, it is not entitled to the same weight as an attested statement of fact. The Respondent did not reply to the Complainant’s letter concerning trademark infringement and did not submit a Response offering an alternative reason for choosing the Domain Name. It might have been possible, for example, for the Respondent to explain why “TDS Holdings” was selected as the company name, and how the Domain Name was chosen and used in connection with a business operated or planned by that company as a wireless reseller. Instead, Ms. Slade merely sent emails to the Center claiming that the UDRP proceeding represented “harassment” (for which she threatened legal action) and ignoring invitations to submit a Response.
The Panel, in the end, must make a determination based on the evidence found in the available record (Rules 15(a)). Bluster is no substitute for proof. While the Panel may imagine possible legitimate explanations for the Respondent’s apparently opportunistic conduct, the Panel’s conclusions concerning the probability of bad faith must be based on the weight of the evidence and not on suppositions or bald, unattested assertions. On the current record, the Panel finds that it is more likely than not that the Domain Name was registered and used in a bad faith attempt to mislead Internet users and divert potential customers to a competitor. Thus, the Panel concludes that the third element of the Complaint has been established.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <tdswireless.com>, be transferred to the Complainant.
W. Scott Blackmer
Sole Panelist
Dated: October 21, 2010