voicestream.org

WIPO Arbitration and Mediation Center

The Complainant is VoiceStream Wireless Corporation of 12920 SE 38^th Street, Bellevue, Washington 98006, United States of America.

The Respondent is Hanjin Ko of 96-6 Padong Suseonggu, Tageu 706-07, Republic of Korea.

The domain name at issue is <voicestream.org>.

The Registrar is Register.com, Inc.

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on November 29, 2001 [electronic version] and on December 3, 2001[hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is December 17, 2001.

On December 4 and December 11, 2001, the Center transmitted via email to Register.com, Inc requests for registrar verification in connection with this case and on December 14, 2001, Register.com, Inc transmitted by email to the Center Register.com's verification response confirming that the registrant is Hanjin Ko who is also the contact for both administrative and billing purposes.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on December 17, 2001 to <[email protected]>; and to <[email protected]> this Notification of Complaint and Commencement of Administrative Proceeding. The Center advised that the Response was due by January 6, 2002. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to Hanjin Ko, 63-51 Beomeo 4-Dong, Suseonggu, Taegu 706-819, Republic of Korea.

No Response was received from the Respondent by the due date of January 6, 2002. On January 9, 2002, Notice of Respondent Default was sent to the Complainant and to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of Administrative Proceeding.

However, on December 3, 2001, the Respondent emailed the Center acknowledging receipt of the Complaint and requesting that the documents be sent to him in the Korean language and that the language of the administrative proceeding should be Korean. Then on December 17, 2001, the Respondent emailed the Center repeating the request that the proceeding should be in the Korean language, since he did not have the financial means to pay for translations into English. That email also set out in English a Response. A formal Response properly formatted was subsequently received by the Center on January 12, 2002 [electronic version] and on January 17, 2002 [hard copy]. That formal Response was in substance verbatim to the earlier Response contained in the email of December 17, 2001.

The Complainant responded to the Center by email dated January 23, 2002, clarifying an aspect arising from the Response. Further reference will be made to this in paragraph 5.4.2 below.

The language prescribed governs communication in this administrative proceeding [Rules, paragraph 2(c)]. The language of the proceedings is the language of the Registration Agreement [ Rules, paragraph 11]. The language of Registration Agreement with Register.com, Inc is English and it is, therefore, appropriate that English should be the language of this administrative proceeding.

As to the lateness of the Response, it is the duty of the Panel to ensure that the Parties are treated with equality and that each Party is given fair opportunity to present its case [Rules, paragraph 10(b)] and, further, that the administrative proceeding takes place with due expedition [Rules, paragraph 10(c)]. Since the substance of the Response was received [January 12, 2002] only some 6 days after the due date [January 6, 2002] the Panel considers it appropriate that the late filed formal Response be admitted.

Having received Declarations of Impartiality and Independence and Statements of Acceptance from the three Panelists, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Professor Sang-Hyun Song, Dr. Dan Hunter and Mr. David Perkins were formally appointed as Panelists. The Projected Decision Date was March 27, 2002. The Panelists find that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having verified the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Policy, the Rules and the Supplemental Rules.

4.1.1 The Complainant is a Delaware Corporation with its principal place of business in Bellevue, Washington, United States of America. Founded in 1996, the Complainant is one of America's largest and best-known wireless communication providers. It is currently America's fifth largest wireless phone company, with approximately 15,000 employees serving 5.2 million subscribers.

4.1.2 This business was originally operated by the Complainant's former parent company, Western Wireless Corporation. In 1999 the Complainant was spun-off by Western Wireless Corporation as a separate entity.

4.2.1 From its inception in 1996 the Complainant used, as did its former parent company, Western Wireless Corporation, the VOICESTREAM trademark to identify its goods and services. The VOICESTREAM mark is the subject of 5 registrations in the United States, 17 additional pending applications in the United States, 2 registrations in Mexico and a pending application in Europe. The US registrations comprise the following

4.2.2 The Complainant has spent substantial time, effort and money advertising and promoting the VOICESTREAM trademark in the United States and elsewhere. In particular, the Complaint sets out the following:

- The Complainant owns over 430 Personal Communication Services licenses in the United States covering a population of 272 million people.

- In the financial year 2000, the Complainant's revenues exceeded US$1.9 billion.

- Since 1998 the internationally known actress, Jamie Lee Curtis, has advertised the Complainant's services in print, television and radio advertisements. In 1999 the advertising campaign received the Best Overall Excellence in Marketing award from the Cellular Telecommunications and Internet Association [CTIA}.

- The Complainant uses and operates the Global System for Mobile [GSM] communications technology platform which has been adopted as the standard by the United States and 158 other countries and which accounts for some 70% of the total digital wireless market. The Complainant is the only US wireless telecommunications provider with a national GSM wireless technology network, which gives customers the ability to use their VOICESTREAM number when travelling internationally and supports roaming capabilities from other GSM customers travelling to the United States.

- The Complainant has international roaming agreements with more than 164 of the major operators worldwide providing service in over 71 countries including: Australia, China, Chile, France, Germany, Greece, Hong Kong, India, Italy, the Netherlands, Russia, Saudi Arabia, Spain, Switzerland and the United Kingdom.

4.2.3 The Complaint states that the Complainant's achievements have generated tremendous attention in the media and as a result of its use and promotion the VOICESTREAM name and mark have become a famous and highly distinctive trademark.

The Complainant operates a website at www.voicestream.com which generates some 351,800 hits per week. Just over 50% of those hits are by customers accessing wireless messaging services through the Complainant's related <myvoicestream.com> domain name. During 2001, the Complainant generated an average of 2,261 hand set sales per month through its www.voicestream.com website.

Nothing is known of the Respondent, whose Response gives no information about his activities. The use made of the domain name in issue is outlined in the Complaint [see, paragraph 5.1.1 below]. The Response refers to a website being constructed in the near future from which the Respondent hopes to generate income.

The Complainant's case is that the domain name in issue is in substance identical to its VOICESTREAM trademark. It is also confusingly similar to the VOICESTREAM trademark.

5.1.1 The Respondent registered the domain name in issue on September 29, 2000. It does not appear to have linked to a website until about October 2001, when the Complainant learned that it resolved to a website called www.investorsuniverse.com. A print out from that website shows that it offers, inter alia, what it calls its Ambassador Program. Affiliates are invited to link www.investorsuniverse.com to their own websites and when visitors through the Affiliate's website sign up with InvestorsUniverse the Affiliate receives a US$1.00 fee. Each Affiliate has its own ID so that such visitors can be identified as being introduced through the Affiliate in question. In this way, the Complainant says the Respondent benefits by trading-off the goodwill of the VOICESTREAM mark.

5.1.2 Further, the domain name in issue will create the impression that the products and services accessible through www.investorsuniverse.com are affiliated with the Complainant. So, consumers seeking the Complainant's Voicestream website, who mistakenly use .org instead of .com, will be misdirected to the Respondent's website and on to the www.investorsuniverse.com site. The net result will be customer confusion and dilution of the Complainant's valuable and distinctive VOICESTREAM trademark.

5.1.3 In addressing confusing similarity relevant considerations are the similarity of

- the marks;
- the products and services;
- the users; and
- the channels of distribution.

The Complainant basis this proposition on See Yahoo! Inc v. Eitan Zviely, etal. [WIPO Case No. D2000-0273]. That case involved 37 domain names which incorporated the YAHOO! trademark or a close variant of it. The Panel found that the Respondent was deliberately attempting to direct misled Yahoo! users to his website:

Here, consumers seeking the Complainant's www.voicestream.com website but who mistype or misspell the TLD and use .org instead of .com will be misdirected to the Respondent's website with the consequences set out in the preceding paragraph.

5.1.4 The Complainant cites cases where confusing similarity was found where the Respondent, without justification, added .org to the Complainant's trademark.

MSNBC Cable, LLC v. Tysys.com [WIPO Case No. D2000-1204]. The Complainant was MSNBC, a widely known worldwide news organisation providing up-to-the-minute news by broadcast, cable and the Internet. The <msnbc.org> domain name in issue resolved to the Respondent's web hosting and development company website, www.tysys.com. That website featured commercial advertisements relating to Tysys' access to hot domains for sale or lease. The Panel found that the domain name and the MSNBC mark were, for all practical purposes, identical. It also found that Internet users intending to access the Complainant's website but who reach another website through the domain name in issue, would think mistakenly that an affiliation of some sort existed between the Complainant and the Respondent. The Panel, finding confusing similarity, concluded

United States Trust Company of New York v. Big Picture Media [WIPO Case No. D2000-1652]. Here, the domain name in issue was <ustrust.org>. The Complainant had registered US trademarks for banking and related services for UNITED STATES TRUST COMPANY: UNITED STATES TRUST: and U.S. TRUST. It had used the UNITED STATES TRUST COMPANY mark since 1853. The Panel found confusing similarity, stating:

EAuto, LLC v. Triple S Auto Parts, etc [WIPO Case No. D2000-0047]. There, the domain name in issue was <eautolamps.com>. The Complainant owned a US registered trademark for EAUTO and was in the business of offering a full range of automotive information to companies and individuals through its website at www.eauto.com. The Respondent had been in the automotive lamp business for over 10 years and in 1999 registered the domain name in issue in order to sell a full range of automobile lamps through its website under the <eautolamps.com> domain name.

As to confusing similarity, the Panel found EAUTO was a distinctive mark, "… albeit one at the weaker end of the spectrum." The Panel went on to state:

5.1.5 Based on these authorities and the facts in this case, the Complainant contends that the domain name in issue is both identical and confusingly similar to its VOICESTREAM mark.

The Complainant's case is as follows.

5.2.1 The VOICESTREAM mark was first used in commerce in February 1996, and both that use and certain of the registered VOICESTREAM trademarks predate registration on September 29, 2000, of the domain name in issue. No use was made of that domain name prior to about October 2001, when was linked to the www.investorsuniverse.com website as explained in paragraph 5.1.1 above. It follows that both before the date when the domain name was registered [September 2000] and also before the date that it was first used in relation to the www.investorsuniverse.com website [c. October 2001], the Respondent had constructive knowledge of the Complainant's VOICESTREAM mark and business. The extent of the Complainant's business under and by reference to the VOICESTREAM name and mark in the year 2000 was significant [see, paragraphs 4.2.2 and 4.3 above] and this further provided actual or at least further constructive notice to the Respondent by September 2000 when registering the domain name in issue.

The Complainant cites The Step2 Company v. Softastic.com Corp [WIPO Case No. D2000-0393] as authority for the proposition that registration of a US trademark constitutes constructive notice to a Respondent of the registrant's claim to own such trademark. In that case, the domain name in issue was <step2.com>. The Complainant held registered trademarks for STEP2 in Canada, Taiwan, Thailand and the United States, the earliest dating from 1992, for a variety of goods. The domain name in issue was parked on a domain name auction site. No Response was filed. In relation to the issue of registration in bad faith, the Panel referred to 15 USC section 1972 which provides:

The Complainant then cites Sunglass Hut Corporation v. AAANet, Inc. [NAF Case No. FA0003000094370] for the proposition that evidence of widespread use of a Complainant's trademark carries with it an inference that the Respondent had actual or at least constructive notice of prior use of the mark and the Complainant's rights in the mark before the domain name in issue was registered. In that case, the domain name in issue was <sunglasshot.com> registered in 1998. The Complainant's SUNGLASS HUT mark was first used in commerce as early as 1971, it was registered as a US trademark in 1988 and the SUNGLASS HUT name was known internationally, the Complainant trading under that name in 50 countries worldwide. The Complainant had its own www.sunglasshut.com website from which it had sold sunglasses, watches and accessories since 1995. The domain name in issue resolved to the Respondent's AAAnet.Inc homepage, from which the Respondent also sold sunglasses, watches and accessories.

The Panel, finding for the Complainant, stated:

5.2.2 The Complaint avers that there has been no bona fide offering of goods or services by the Respondent under the domain name in issue, merely the linking since about October 2001, to an online financial information site. Further, the Complainant's case is that [for the reasons set out in paragraph 5.2.1 above], the Respondent had actual or constructive notice of the Complainant's rights to and business under the VOICESTREAM mark both at the time of registering the domain name in issue [September 2000] and subsequently using it [October 2001]. So, the Complainant says, neither the registration nor the subsequent use can be bona fide for the purpose of paragraph 4(c)(i) of the Policy.

5.2.3 The Respondent has not been commonly known by the domain name <voicestream.org>.

5.2.4 The use latterly made by the Respondent of the domain name in issue [see, paragraph 5.1.1 above] is for commercial gain under the Affiliate Program of InvestorsUniverse.com. As demonstrated above, that use is not fair use without intent to misleadingly divert the Complainant's customers or to tarnish the VOICESTREAM trademark.

5.2.5 It follows, the Complainant says, that the Respondent cannot satisfy any of the circumstances set out in paragraph 4(c) of the Policy which demonstrate rights or interests to the domain name in issue. Any suggestion of rights or legitimate interests becomes still less plausible when viewed against the Respondent's bad faith conduct addressed in the following paragraphs.

The Complainant's case is as follows:

5.3.1 Because the Respondent had actual or constructive knowledge before registering the domain name in issue in September 2000 of the Complainant's prior widespread use of and reputation in the VOICESTREAM trademark, including registration of that mark in the United States, registration of the domain name cannot have been in good faith.

5.3.2 There is evidence of a pattern of conduct by the Respondent registering another third party trademark in bad faith. Here, the Complainant cites Repsol YPF, S.A. v. COMn.com [WIPO Case No. D2001-0741]. The Respondent in this case, Hanjin Ko, operates under the COMn.com name: this is apparent from the Registrar Verification [paragraph 3 above]. Indeed, the Response in the Repsol case stated that Mr. Hanjin Ko was the owner of COMn.com.

Repsol was the Spanish national oil company dating from 1986. YPF was a leading Argentinean oil company. Merger of the 2 entities began in January 1999, and the merged company now ranks eighth in the world in terms of its oil reserves and hydrocarbon production. The REPSOL trademark was first registered in Spain in 1956. The mark YPF was registered in Argentina in 1984. Since the merger the merged company had applied for registration of the mark REPSOL YPF in many countries worldwide, including in October 1999, in Korea which matured into a registration in November 2000. The domain name in issue was registered in February 2001.

The Respondent asserted that rep was an abbreviation for representative and that solypf was Korean for pine needle. He claimed to have made demonstrable preparations to use the domain name <repsolypf.com> for a website describing the benefits of the use of pine needle extract in drinking water.

In finding for the Complainant, the Panel stated:

The Panel considers also that there is an available inference that the Respondent knew of the Complainant's rights at the time of registration of the domain. The name of the merged entity of two large international oil companies cannot have escaped the attention of the financial press and markets worldwide, even although the two companies operated in Spain and Latin America. The combination of their two unusual names is just too coincidental. The Respondent's explanation strains credulity. Moreover, at the time of the domain name registration Complainant had a registeredmark in Korea and some commercial presence in that country. These facts, plus the lack of any real development of the website allow for an inference of bad faith use."

5.3.3 The gTLD .org suggests a non-profit organisation. Here, however, the domain name in issue is being used for commercial gain through the Affiliate Program. On similar facts the Complainant points to cases where it was found that the Respondent was seeking to gain advertising or other revenue from mis-typed domain names and this was bad faith conduct justifying transfer of the domain name in issue to the Complainant. The Complainant cites two cases as illustrative.

Williams-Sonoma Inc v. Polanski [WIPO Case No. D2001-0236]. There, the domain name in issue was <william-sonoma.com>. The Complainant retailed cookware and associated products through 200 of its US WILLIAMS-SONOMA retail outlets and through its mail order catalogue mailed to some 2.5 million US homes each month. It had US registered trademarks for WILLIAMS-SONOMA in Classes 16: 24: 25: 30: 31 and 35. It also had the mark registered in Australia: Hong Kong: Japan: Korea: Singapore: the European Community: and New Zealand. No Response was filed.

As to use in bad faith, pointing to the various trademark registrations, the inherent distinctiveness of that mark and its long and extensive use, the Panel held - quoting from the case Telstra Corporation Limited v. Nuclear Marshmallows [WIPO Case No. D2000-0003] - it was

As to registration in bad faith, the Panel stated:

Inter-IKEA v. Polanski [WIPO Case No. D2000-1614]. This was an earlier case involving the same Respondent. Here, he had registered <ikeausa.com>. The Complainant has started trading under the IKEA name and mark in 1950. It had over 1200 trademark registrations for the IKEA mark in more than 70 countries. The Respondent's domain name originally resolved to a casino online virtual gambling site. The Panel had no hesitation in finding that the Respondent could not have been unaware of the Complainant's activities under the IKEA name and mark. As to use, the Panel held

5.3.4 The Complainant asserts that the circumstances of paragraph 4(b)(iv) are satisfied in this case, namely that by using the domain name in issue the Respondent has intentionally attempted to attract, for commercial gain through the Affiliate program, Internet users to the www.investorsuniverse.com website, by creating a likelihood of confusion with the VOICESTREAM mark as to the source, sponsorship, affiliation or endorsement of that website.

5.4.1 Here, the Respondent's case appears to be a challenge to the rights claimed by the Complainant in the VOICESTREAM trademark. It is, the Respondent says, no more than the compound of two words in everyday worldwide use, namely voice and stream. The Respondent points to other domain names incorporating the VOICESTREAM mark, namely voicestream with the suffixes .biz; .co.uk; .tv; .de; .cc; .at; .be; .dk; .it; and .nl and proposes that if the Complainant can use its VOICESTREAM trademark to complain about the domain name in issue, the Complainant should also be attempting to stop use of those other voicestream prefixed domain names.

5.4.2 Further, the Respondent says that his enquiries show that the VOICESTREAM mark is also registered by Western Wireless Corporation. But, as clarified by the Complainant in its communication dated January 23, 2002, the Complainant was spun-off from Western Wireless Corporation in 1999 [see, paragraph 4.1.2 above]. Indeed, US registered trademark numbers 2.045,084 and 2,060,060 were registered in the name of Western Wireless Corporation.

5.4.3 The Respondent equates the compound of voice and stream with other generic words, such as flower and dream which the Respondent says have also been registered as trademarks by third parties. Such registrations should not, however, in his view preclude use by anybody of those generic names as domain names.

The Respondent states that prior to being put on notice of this dispute he had no knowledge of the complainant company. Consequently, he has used the domain name in issue in connection with a bona fide offering of goods or services through the InvestorsUniverse.com Affiliates program.

Because he had no prior knowledge of the complainant company before notice of this dispute, the Respondent says he registered the domain name in good faith in September 2000. His intention was to

Interpreting this as best it can, the Panel assumes the Respondent is saying that because he registered the domain name in issue in good faith and began using it in good faith in late 2000 in the Affiliate Program of InvestorsUniverse.com before notice of this dispute, the Complaint fails to satisfy the two requirements of paragraph 4(a)(iii) of the Policy.

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following:

(i) that the Respondent's 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.

6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.

6.3 Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The domain name in issue, save for the .org TLD, is identical to the Complainant's VOICESTREAM registered trademark. The Complainant, therefore, satisfies the first limb of paragraph 4(a) of the Policy.

Were it necessary to address confusing similarity - which it is not - the Panel is persuaded by the case made out by the Complainant.

As to the voicestream domain names with the suffixes .biz; .co.uk; .tv; .de; .cc; .at; .be; .dk; .it; and .ml referred to in the Response the Panel has established through its own searches that <voicestream.biz> and .cc are registered in the name of the Complainant. Of the others, at least 5 are registered by persons or companies who do not appear to have any affiliation with the Complainant. The Policy, however, requires only that the Complainant must establish rights in the VOICESTREAM trademark and this it has been done to the Panel's satisfaction.

6.5.1 The Panel is not convinced by the Respondent's assertion that prior to notice of this dispute he had no knowledge of the Complainant’s Company. The Respondent professes to be a "poor and starveling main" so that he cannot afford to defend himself properly in this administrative proceeding, with the inference that it is entirely plausible that he would have no prior knowledge of the Complainant or its VOICESTREAM business. The Complainant has, however, referred to the Repsol case, where the Respondent was represented by US attorneys. While the Respondent may have limited financial resources - and the Panel can only speculate - it is clear that he is not a stranger to proceedings under the Policy.

6.5.2 Nothing in the Response establishes any of the circumstances in paragraph 4(c) of the Policy as demonstrating rights to or legitimate interests in the domain name in issue. Specifically, the Panel is satisfied that the Respondent had constructive notice of the Complainant and its VOICESTREAM business even if, which the Panel doubts, the Respondent was unaware of the existence of its registered US trademarks for VOICESTREAM. Thus, in the Panel's view, any use by the Respondent of the domain name in issue could not have been bona fide or fair. The Complaint, therefore, satisfies the second limb of paragraph 4(a) of the Policy.

6.6.1 It follows from the Panel's finding in relation to rights or legitimate interests, that the Panel also finds that the domain name was registered in September 2000, in bad faith. This is compounded by the Respondent's conduct in the Repsol case.

6.6.2 As to use, where - as in this case - the Respondent has no rights or legitimate interests in the domain name in issue, use in the circumstances set out in paragraph 5.3.4 above evidences bad faith of the type prescribed in paragraph 4(b)(iv) of the Policy.

6.6.3 The Complaint, therefore, also meets the twin requirements of paragraph 4(a)(iii) of the Policy.

For all the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. Accordingly, the Panel requires that registration of the domain name <voicestream.org> be transferred to the Complainant.

David Perkins
Presiding Panelist

Dan Hunter
Panelist

Sang-Hyun Song
Panelist

Dated: March 25, 2002