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
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