DECISION

XO Communications Inc. v. XO Network Operations Center Inc.

Claim Number:  FA0303000150786

PARTIES

Complainant is XO Communications Inc., Reston, VA (“Complainant”), of Finnegan Henderson Farabow Garrett & Dunner L.L.P.. Respondent is XO Network Operations Center Inc., Redondo Beach, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <xonoc.com> and <xonoc.net>, registered with Dotster.

PANEL

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

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 19, 2003; the Forum received a hard copy of the Complaint on March 20, 2003.

On March 24, 2003, Dotster confirmed by e-mail to the Forum that the domain names <xonoc.com> and <xonoc.net> are registered with Dotster and that Respondent is the current registrant of the names. Dotster has verified that Respondent is bound by the Dotster 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 March 24, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 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@xonoc.com and postmaster@xonoc.net 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 April 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <xonoc.com> and <xonoc.net> domain names are confusingly similar to Complainant’s XO and XO.COM marks.

2. Respondent does not have any rights or legitimate interests in the <xonoc.com> and < xonoc.net> domain names.

3. Respondent registered and used the <xonoc.com> and <xonoc.net> domain names in bad faith.

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

FINDINGS

Complainant, XO Communications, is a leading telecommunications service provider and offers a comprehensive array of data and voice communications services. Complainant changed its business identity from Nextlink Communications, Inc. to XO Communications on September 25, 2000. Since that date, Complainant has continuously used the XO and XO.COM marks to identify its business and related products and services. Complainant has used the XO and XO.COM marks since 1995 via a predecessor-in-interest. More specifically, Internex Information Service, which is now part of Complainant’s enterprise, registered and used the <xo.com> domain name since at least as early as 1995.

Complainant has filed numerous trademark applications with the U.S. Patent and Trademark Office and other international trademark authorities for its XO mark, including, inter alia: U.S. App. No. 76/124,990 filed September 8, 2000. Additionally, Complainant holds numerous trademark registrations for its XO mark worldwide, including, inter alia: Australian Reg. No. 864,595 issued January 31, 2001; Israeli Reg. No. 142,458 issued September 28, 2000; and Thai Reg. No. 444,912 issued February 2, 2001. 

Complainant showcases its products and services at its website located at <xo.com>. Complainant recorded more than $723,000,000 in revenue in 2000, more than $1,258,000,000 in 2001 and more than $960,000,000 for the first three quarters of 2002. Complainant expends millions of dollars each year to advertise and promote its XO Communications entity and related products.

Based on Complainant’s extensive use and promotion of the XO and XO.COM marks as described above, Complainant has acquired significant goodwill in its marks among the consuming public.

Respondent, XO Network Operations Center Inc., registered <xonoc.com> and <xonoc.net> on November 13, 2002. Complainant’s investigation of Respondent indicates that the domain names are being used to send unsolicited bulk e-mail, i.e., Internet spam. Spamhaus, a watchdog group that “tracks the Internet’s worst spammers, known Spam Gangs and Spam Support Services,” has identified Respondent as an alias for Empire Towers, a known spammer listed on Spamhaus’ ROKSO (The Register of Known Spam Operations) database. Evidence indicates that Respondent profits substantially from sending Internet spam.

Complainant’s investigation of Respondent reveals that Respondent has a history of registering trademark-related domain names, including: <veriocorp.com> (incorporating the mark VERIO), <angelflre.com> (a misspelling of the ANGELFIRE mark), <trlpod.com> (a misspelling of the mark TRIPOD), and <exclte.com> (a misspelling of the mark EXCITE), among others.

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 XO and XO.COM marks through registration with various international trademark authorities. Additionally, Complainant has continuously used the marks since at least September 25, 2000 and possibly earlier, but that determination is not material in the resolution of this dispute and need not be made. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <xonoc.com> and <xonoc.net> domain names are confusingly similar to Complainant’s XO and XO.COM marks. Respondent’s domain names incorporate Complainant’s established XO mark in its entirety. Each of Respondent’s domain names is comprised of Complainant’s XO mark and the generic acronym “NOC,” which stands for “Network Operations Center,” or the physical space where a large telecommunications network is managed. The addition of an industry-related word to Complainant’s mark fails to create distinguishable domain names for the purposes of Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying PG&E mark held by Complainant”).

Additionally, because top-level domains, such as “.com” and “.net,” are a required characteristic in a domain name, their presence is inconsequential when determining confusing similarity under the Policy. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not respond to Complainant’s submission, thereby failing to fulfill its burden of demonstrating rights or legitimate interests in the subject domain names. Respondent’s failure to submit evidence or assertions allows all reasonable inferences made by Complainant to be regarded as true, unless clearly contradicted by the evidence. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Moreover, Respondent’s failure to submit evidence of circumstances that may suggest it has rights or legitimate interests in the disputed domain names corroborates Complainant’s assertions that Respondent has none. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Complainant’s uncontested evidence indicates that Respondent uses the subject domain names to commercially benefit from sending unsolicited e-mails to Internet users. Such use of the domain names works to tarnish Complainant’s XO mark and the goodwill associated with Complainant’s products and services. Respondent’s misappropriation of the domain names has damaged and will continue to damage the reputation of Complainant and its XO mark. Therefore, Respondent’s activities fail to support a finding of rights or legitimate interests in the domain names under Policy ¶¶ 4(c)(i) or (iii). See generally MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish Complainant’s mark); see also Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).

No evidence before the Panel suggests Respondent is commonly known by the domain names or the “xonoc” second-level domain, and Respondent has failed to produce any. However, information does suggest Respondent is a habitual cybersquatter that registers confusingly similar variations of established marks in domain names. Complainant submits evidence that Respondent is identified by a spam watchdog group as Empire Towers, a notorious spammer. Because of the above information, the Panel finds Respondent’s self-proclaimed identity of “XO Network Operations Center Inc.” insincere. Therefore, Respondent fails to establish rights in the domain names under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Policy paragraph 4(b) represents a non-exhaustive listing of bad faith criteria. When deciding whether Respondent registered or used the domain names in bad faith, the Panel is permitted to consider the “totality of circumstances” surrounding the dispute. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy do not constitute an exhaustive listing of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Circumstances indicate that Respondent had knowledge of Complainant’s mark prior to seeking registration of the infringing domain names. Respondent has a history of registering variations of famous marks in domain names, and seeking to profit from subsequent use of the domain names. Respondent’s habitual targeting of others’ marks allows the inference that it was aware of Complainant’s XO mark when selecting its infringing domain names. Respondent’s registration of the subject domain names, despite knowledge of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

Respondent makes bad faith use of the domain names by engaging in the tarnishing activity of disseminating Internet spam. Respondent uses domain names that are confusingly similar to Complainant’s XO mark to perpetuate this damaging and annoying activity. Such use harms the goodwill Complainant has established in its XO mark through substantial advertising efforts and its related services. Therefore, Respondent’s activity constitutes bad faith use of the domain names under Policy ¶ 4(a)(iii). See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a tarnishing pornographic site is not a legitimate or fair use).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <xonoc.com> and <xonoc.net> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  April 28, 2003

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