DECISION

Qwest Communications International Inc. v. Domain Active Pty. Ltd.

Claim Number: FA0307000167914

PARTIES

Complainant is Qwest Communications International Inc., Denver, CO, (“Complainant”) represented by Anthony J. Malutta of Townsend and Townsend and Crew LLP. Respondent is Domain Active Pty. Ltd., Clayfield, Australia (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <qwestwireles.com> registered with Fabulous.com Pty Ltd.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically July 3, 2003; the Forum received a hard copy of the Complaint July 3, 2003.

On July 6, 2003, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that the domain name <qwestwireles.com> is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and 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 July 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 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@qwestwireles.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 July 30, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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. The domain name registered by Respondent, <qwestwireles.com>, is confusingly similar to Complainant’s QWEST mark.

2. Respondent has no rights or legitimate interests in the <qwestwireles.com> domain name.

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

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

FINDINGS

Complainant holds a number of trademark registrations in the United States and abroad, including Reg. No. 1,966,694 registered on April 9, 1996 with the U.S. Patent and Trademark Office (“USPTO”) for the QWEST mark in relation to telecommunication services, namely the electronic transmission of voice, data and messages.

Complainant has offered wireless telephone services under the QWEST WIRELESS mark since as early as June 2000. Complainant markets these services in a variety of media, including through a website located at the <qwestwireless.com> domain name.

Respondent registered the <qwestwireles.com> domain name August 7, 2002. Respondent is using the disputed domain name to divert Internet traffic to a variety of commercial websites unrelated to Complainant’s telecommunications services.

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant has established in this proceeding that it has rights in the QWEST mark through registration with the USPTO.

The domain name registered by Respondent, <qwestwireles.com>, is confusingly similar to Complainant’s QWEST mark because the disputed domain name appropriates Complainant’s entire mark and merely adds the nonsensical term “wireles” to the end of Complainant’s mark. The addition of the gibberish term “wireles” does not sufficiently distinguish Respondent’s domain name from Complainant’s mark because the gibberish term is a simple misspelling of the term “wireless,” a term that is directly related to Complainant’s business. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Yahoo! Inc. and GeoCities v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).

Accordingly, the Panel finds that Complainant met the requirements of Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established in this procedure that it has rights to and legitimate interest in the QWEST mark and has alleged that Respondent has no such rights or legitimate interests. Respondent did not file a Response. In such circumstances, the Panel may accept all reasonable allegations and inferences in the Complaint to be true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, the Panel presumes that Respondent lacks any rights to or legitimate interests in the <qwestwireles.com> domain name because Respondent failed to come forward with evidence to counter Complainant’s allegations and proof. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also 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).

Respondent is using the disputed domain name to divert Internet users to a variety of commercial websites unrelated to Complainant’s telecommunications services. Respondent’s use of a domain name that is confusingly similar to a Complainant’s mark to divert Internet traffic to a myriad of pop-up ads and websites does not suggest a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Party Night Inc. and Peter Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements was not a bona fide offering of goods or services); see also WeddingChannel.com Inc. v. Andrey Vasiliev a/k/a NA and Free Domains Parking, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to Complainant’s mark, websites where Respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).

Moreover, Respondent has come forward with no proof and no proof in the record suggests that Respondent is commonly known by QWESTWIRELES or <qwestwireles.com>. Thus, Respondent has failed to establish any rights to or legitimate interests in the disputed domain name with regard to 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Complainant met the required showing under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The circumstances of Respondent’s use of the domain name permits the Panel to find that Respondent benefits financially from such diversionary use of the <qwestwireles.com> domain name to inundate unsuspecting Internet users with a plethora of pop-up ads and portal websites. The use of a domain name that is confusingly similar to a Complainant’s mark to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Likewise, Complainant has produced evidence to show that in the past Respondent registered and used other domain names that are confusingly similar to well-known marks. In the absence of any proof from Respondent to the contrary, this evidence shows that Respondent has engaged in a pattern of domain name registrations to prevent trademark or service mark owners from reflecting those marks in a domain name. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Playboy Enters. Int’l, Inc. v. Domain Active Pty Ltd., D2002-1156 (WIPO Feb. 13, 2003) (finding Respondent’s registration and use of more than 70 domain names incorporating the famous PLAYBOY mark to be in bad faith); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (transferring the <wwwmedline.com> domain name to Complainant).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

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

Hon. Carolyn Marks Johnson, Panelist

Dated: August 13, 2003.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/841.html