'cingularporn.com' registrant fails to circumvent UDRP Rules
In Cingular Wireless LLC v VTX Inc, World Intellectual Property Organization (WIPO) panellist M Scott Donahey has ordered the transfer of the domain name 'cingularporn.com' to Cingular Wireless after the respondent failed in its attempt to circumvent the Uniform Domain Name Dispute Resolution Policy (UDRP) Rules.
VTX sends pornographic images to wireless telephones and devices for a fee. Upon discovering that it had registered the domain name 'cingularporn.com', Cingular - the second largest provider of wireless communication services in the United States - filed a complaint with WIPO. VTX initially failed to file a timely response but subsequently sent an email directly to Donahey.
Donahey noted that this direct communication was in violation of the following paragraphs of the UDRP Rules:
- Paragraph 2(h)(iii), which requires that all communications by a party be copied to the other party and to the dispute resolution service provider;
- Paragraph 8, which prohibits direct communication between a party and the panel, and requires that all communications between a party and the panel be conducted via the case manager; and
- Paragraph 12, which permits the panel to request further statements from the parties.
Accordingly, Donahey stated that the email was neither read nor considered in any way.
Donahey also noted that:
- a section of VTX's 'pocketjoy.com' website is directed at Cingular's subscribers;
- shortly after receiving two cease and desist letters from Cingular, VTX notified Cingular's attorneys that it had listed 'cingularporn.com' for sale on eBay's online auction website; and
- VTX temporarily transferred ownership of the domain name to Domains by Proxy, which conceals the identity of a domain name holder.
Donahey next applied Paragraph 4 of the UDRP and found that:
- the disputed domain name was confusingly similar to Cingular's well-known mark;
- VTX had no rights or legitimate interests in respect of the disputed domain name; and
- VTX's listing of the domain name for sale on eBay with a starting bid of $5,000 - a price considerably in excess of its documented out-of-pocket registration costs - constituted bad-faith use.
Consequently, Donahey ordered the transfer of the domain name 'cingularporn.com' to Cingular.
This decision demonstrates that a party must adhere to the rules if it wishes to have its arguments considered under the UDRP.
Maria Baratta, Kilpatrick Stockton LLP, Atlanta
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