DECISION

Qwest Communications International Inc. v. Qwest Networking a/k/a Domain Administration

Claim Number:  FA0402000238004

PARTIES

Complainant is Qwest Communications International Inc. (“Complainant”), represented by Anthony J. Malutta, of Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111.  Respondent is Qwest Networking a/k/a Domain Administration (“Respondent”), 18 Oakridge Ave., Salem, NH 03079.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <qwestcommunications.net>, registered with Enom, Inc.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 20, 2004; the Forum received a hard copy of the Complaint on February 23, 2004.

On Feburary 26, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <qwestcommunications.net> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 22, 2004 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@qwestcommunications.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 March 26, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon 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 <qwestcommunications.net> domain name is identical to Complainant’s QWEST COMMUNICATIONS mark.

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

3. Respondent registered and used the <qwestcommunications.net> domain name in bad faith.

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

FINDINGS

Complainant, Qwest Communications, is a large international telecommunications corporation.  It has operated under the QWEST name since as early as 1981, and under the Qwest Communications name since 1992.  Complainant has registered the QWEST marks (Reg. Nos. 1,966,694, 2,210,922, and 2,513,382, registered on April 9, 1996, December 15, 1998, and November 27, 2001, respectively) and QWEST COMMUNICATIONS mark (Reg. No. 1,979,485, registered on June 11, 1996) with the U.S. Patent and Trademark Office (“USPTO”).

Respondent, Qwest Networking a/k/a Domain Administration, registered the <qwestcommunications.net> domain name on October 20, 2003.  The domain name redirects Internet users to <crucialservers.net>—a website marketing “Collocation and Internet solutions.”  Complainant also alleges that Respondent has listed the disputed domain name registration on eBay for sale, at a starting price of $700.  

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 rights in the QWEST COMMUNICATIONS mark determined by its use of the mark in commerce and registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The <qwestcommunications.net> domain name is identical to Complainant’s QWEST COMMUNICATIONS mark.  The only differerence is the omission of the space between the words, which does not significantly distinguish the domain name from the mark.  See Technology Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES trademark).

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

Rights or Legitimate Interests

Respondent is using the disputed domain name, which is identical to Complainant’s mark under the Policy, to market computer and technology business services.  By appropriating Complainant’s mark to market its services, Respondent is not using the disputed domain name for a bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or making a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶ 4(c)(iii). See 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); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated).

The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word “qwest” in the domain name registration WHOIS informaton.  See Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “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); see also Yoga Works, Inc. v. Arpita d/b/a Shanti Yoga Works, 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”).

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

Registration and Use in Bad Faith

Respondent is appropriating Complainant’s mark to sell its computer services.  Registering and using a domain name that is identical to another’s mark for commercial purposes is bad faith, pursuant to Policy ¶ 4(b)(iv).   See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site).

Respondent is also offering the disputed domain name for sale on eBay, with a starting price of $700.  Although Respondent is using the domain name, the listing of the domain name on eBay (with a 5-day bidding period on February, 27, 2004) demonstrates that Respondent has not established goodwill under the <qwestcommunications.net> domain name.  Therefore, the Panel infers that the only reason that Respondent has registered the domain name is to sell the domain name registration for conssideration in excess of out-of-pocket costs, pursuant to Policy 4(b)(i).  See Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to Complainant’s registered DINERS CLUB mark).

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

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

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

Louis E. Condon, Panelist

Dated:  April 8, 2004

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