DECISION

Qwest Communications International Inc. v. Quest Business Strategies Corporation

Claim Number:  FA0310000206342

PARTIES

Complainant is Qwest Communications International Inc. (“Complainant”),  is represented by Anthony J. Malutta, of Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA, 94111.  Respondent is Quest Business Strategies Corporation  (“Respondent”), 252 Norma Avenue, West Islip, NY, 11795.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yourqwest.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 29, 2003; the Forum received a hard copy of the Complaint on October 30, 2003.

On November 4, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <yourqwest.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On November 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@yourqwest.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 2, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <yourqwest.com> domain name is confusingly similar to Complainant’s QWEST mark.

2. Respondent does not have any rights or legitimate interests in the <yourqwest.com> domain name.

3. Respondent registered and used the <yourqwest.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Qwest Communications International Inc., is one of the largest international telecommunication services companies in the world, serving more than 30 million customers in the United States alone. Globally, Complainant offers web hosting services, high-speed Internet access, private networks, wireless data and other technologies and applications that enable global communications. Complainant has been operating under the QWEST mark since as early as 1981, and has obtained several registrations of the mark on the Principal Register of the United States Patent and Trademark Office (e.g. U.S. Reg. No. 1,966,694, registered on April 9, 1996).

Respondent, Quest Business Strategies Corporation, registered the <yourqwest.com> domain name on February 5, 2003, without license or authorization to use Complainant’s QWEST mark for any purpose. Respondent uses the disputed domain name to purportedly offer services in the telecommunications field, although the website makes no reference to the fanciful QWEST mark. The website associated with the disputed domain name is also vague and incomplete and contains many typographical errors. There are no records in the Dunn & Bradstreet business directory referencing any company known as “Quest Business Strategies Corporation,” no telephone directory listing, and no listing in the secretary of state corporate name databases for Respondent’s organization.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the fanciful QWEST mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread use of the mark in commerce since at least 1981. See McCarthy on Trademarks and Unfair Competition, § 11:6 (4^th ed. 2000) (“Fanciful marks are referred to as the "strongest" of all marks, in that their novelty creates a substantial impact on the buyer's mind -- if sufficiently advertised and recognized. Being a "strong" mark has significance, in that the mark will then be given an expansive scope of judicial protection”).

Respondent’s <yourqwest.com> domain name is confusingly similar to Complainant’s QWEST mark. It entirely incorporates Complainant’s fanciful QWEST mark with the addition of the personal possessive pronoun “your,” which does nothing to dispell the confusing similarity that the domain name has with Complainant’s mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Accordingly, the Panel finds that the <yourqwest.com> domain name is confusingly similar to Complainant’s QWEST mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent purportedly offers services in the telecommunications field at the disputed domain name. Although there are doubts that Respondent actually offers any services at the disputed domain name, Respondent’s website at the disputed domain name gives the appearance of providing services that directly compete with those provided by Complainant under the QWEST mark. Respondent’s appropriation of Complainant’s fanciful QWEST mark to compete with Complainant and to divert Internet users seeking Complainant’s services online to the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name. Thus, Policy ¶¶ 4(c)(i) and (iii) are inapplicable in this dispute. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

Complainant’s investigations revealed no company operating as Quest Business Strategies Corporation. Given the fact that Respondent’s given name is “Quest” and not “QWEST,” the Panel accepts Complainant’s assertion that this name was chosen by Respondent due to its similarity to Complainant’s QWEST mark, and holds that Respondent is not “commonly known by” the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also  Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (“Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <yourqwest.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the disputed domain name to purportedly offer services that compete directly with those offered by Complainant under the fanciful QWEST mark. Respondent’s choice of a domain name that fully incorporates this strong mark permits the Panel to infer that Respondent had actual knowledge of Complainant’s rights in the QWEST mark when it chose its domain name and company name. Coupled with its use of the domain name to compete directly with Complainant, the Panel finds sufficient evidence that the disputed domain name was registered and used in bad faith to find for Complainant on this element. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

The Panel thus finds that Respondent registered and used the <yourqwest.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <yourqwest.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.) Panelist

Dated:  December 15, 2003

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