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Generic Top Level Domain Name (gTLD) Decisions |
Qwest Communications International Inc.
v. Domain Admin a/k/a DomDom
Claim
Number: FA0406000286024
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 Domain Admin a/k/a DomDom (“Respondent”), 5316 Sunset
Terrace, Petaluma, CA, Australia 94952.
The
domain name at issue is <qwestmall.com>, registered with Onlinenic,
Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 11, 2004; the Forum
received a hard copy of the
Complaint on June 11, 2004.
On
June 15, 2004, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain
name <qwestmall.com> is registered with Onlinenic, Inc. and that
Respondent is the current registrant of the name. Onlinenic, Inc. has verified
that Respondent
is bound by the Onlinenic, 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
June 16, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
July 6, 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@qwestmall.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 13, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed the
Honorable Charles K. McCotter,
Jr. (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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <qwestmall.com>
domain name is confusingly similar to Complainant’s QWEST mark.
2. Respondent does not have any rights or
legitimate interests in the <qwestmall.com> domain name.
3. Respondent registered and used the <qwestmall.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Qwest Communications International Inc., is in the telecommunication services
business. Complainant owns more than
385 active trademark applications and registrations in over 48 countries for
its QWEST mark and related
marks, among which are several registrations with
the United States Patent and Trademark Office (including Reg. No. 1,966,694
issued
April 9, 1996; Reg. No. 2,210,992 issued December 15, 1998; Reg. No.
2,513,382 issued November 27, 2001; and Reg. No. 1,979,485 issued
June 11,
1996).
Complainant has
used the QWEST mark continuously and extensively in connection with its
telecommunications services since at least
as early as 1981. Complainant serves over 25 million customers
in the United States and other countries, including fourteen states in the
Western United
States. Complainant
completes more than 240 million phone calls daily and globally offers services
such as web hosting, high-speed Internet
access, private networks, wireless
data, and many other applications.
Respondent
registered the <qwestmall.com> domain name on September 28,
2003. Respondent is using the domain
name to link Internet users to a website that features pornographic material
and links to select pornographic
websites.
The website lists fees for connection to some of the websites featured
at the domain name and features pornographic pop-up ads that
trap Internet users
at the website. The most prominent phrase
used on Respondent’s website is “LightSpeed University Cheerleaders.”
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.
Complainant has
established that it has rights in the QWEST mark through registration with the
United States Patent and Trademark
office and through continuous use of its
mark in commerce for at least the last twenty-three years. 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 <qwestmall.com>
domain name registered by Respondent is confusingly similar to Complainant’s
QWEST mark because the domain name incorporates Complainant’s
fanciful mark in
its entirety, adding only the generic or descriptive term “mall.” The mere addition of a generic or
descriptive word to Complainant’s mark does not negate the confusing similarity
of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i). Furthermore, Complainant’s mark is a
fanciful mark due to its distinctive spelling, so it is likely that the public
would associate
the particular spelling found in the domain name with
Complainant’s QWEST mark and associated products and services. See Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name
incorporates the VIAGRA mark in its entirety, and
deviates only by the addition
of the word “bomb,” the domain name is rendered confusingly similar to
Complainant’s mark); see also Westfield
Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the
<westfieldshopping.com> domain name confusingly similar because the
WESTFIELD
mark was the dominant element); see also Aveda Corp. v.
Evita Mktg., Inc., 706 F. Supp. 1419, 12 U.S.P.Q.2d 1091, 1098 (D. Minn.
1989) (quoting treatise: "Fanciful marks, if adopted in a bona fide first
use, are considered the strongest
of marks because their inherent novelty
creates a substantial impact on the buyer's mind").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the domain
name. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the
disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where Complainant has asserted that Respondent has no rights or
legitimate
interests with respect to the domain name it is incumbent on
Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); 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 with
respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate
interests in the domain name); see also
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names).
Furthermore, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted
a Response. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint”);
see also 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).
Respondent is
using the <qwestmall.com> domain name to redirect Internet users
to a pornographic website that provides links to numerous other pornographic
websites for
a fee. Respondent’s use of
a domain name that is confusingly similar to Complainant’s QWEST mark to
redirect Internet users interested in
Complainant’s products and services to a
commercial website that features pornographic material and links to various
pornographic
websites is not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or
fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In
Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that
Respondent’s use of its domain name to link unsuspecting Internet
traffic to an adult orientated website, containing images of scantily clad
women in provocative
poses, did not constitute a connection with a bona fide
offering of goods or services or a noncommercial or fair use); see also Paws,
Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that
the use of a domain name that is confusingly similar to an established mark
to
divert Internet users to an adult-oriented website “tarnishes Complainant’s
mark and does not evidence noncommercial or fair use
of the domain name by a
respondent”); see also McClatchy Mgmt. Serv., Inc. v. Carrington,
FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features
pornographic material, had been “consistently held” to be neither
a bona fide
offering of goods or services . . . nor a legitimate noncommercial or fair
use).
Finally,
Respondent offered no evidence and nothing in the record suggests that
Respondent is commonly known by the <qwestmall.com> domain
name. In fact, not one of Respondent’s
Domain Admin, DomDom, or LightSpeed University Cheerleaders aliases corresponds
in any way to the
domain name, and there is no reference to <qwestmall.com>
at the website. Furthermore,
Complainant has never authorized or licensed Respondent to use its QWEST mark
in any way. Thus, Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
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
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests 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 Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that contains in its entirety
Complainant’s well-known QWEST mark for Respondent’s
commercial gain. Respondent’s domain name diverts Internet
users who seek Complainant’s QWEST mark to Respondent’s commercial pornographic
website
through the use of a domain name that is confusingly similar to
Complainant’s mark. Furthermore,
Respondent is unfairly and opportunistically benefiting from the goodwill
associated with Complainant’s QWEST mark.
Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use 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 Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where Respondent attracted users to a website
sponsored by Respondent and created
confusion with Complainant’s mark as to the
source, sponsorship, or affiliation of that website); see also Entrepreneur
Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. Feb. 2002) ("While an
intent to confuse consumers is not required for a finding of trademark
infringement, intent to
deceive is strong evidence of a likelihood of
confusion").
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith registration and use. See 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”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b)
are intended to be illustrative, rather than exclusive”).
Respondent’s
registration of the <qwestmall.com> domain name that incorporates
Complainant’s well-known and registered mark, deviating only by the addition of
a generic or descriptive
term, suggests that Respondent knew of Complainant’s
rights in the QWEST mark. Furthermore,
Complainant’s mark comprises a fanciful spelling and that exact spelling is
used in the disputed domain name. Thus,
the Panel finds that Respondent chose the <qwestmall.com> domain
name based on the distinctive and well-known qualities of Complainant’s mark
and that this is evidence of bad faith use and
registration pursuant to Policy
¶ 4(a)(iii). See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have
been aware of
Complainant’s trademarks, actually or constructively”); see also 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 Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status
that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”).
Finally,
Respondent registered a confusingly similar domain name that diverts Internet
users seeking Complainant’s products and services
to a pornographic website
that charges fees to link users to particular pornographic websites. Additionally, once Internet users reach
Respondent’s site, the site uses a type of “mousetrapping” to prevent users
from escaping
a series of pornographic pop-up ads. The Panel finds that Respondent’s use of a confusingly similar
domain name to divert Internet users to a pornographic website is evidence
of bad
faith use and registration pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Stock Car Auto
Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23,
2002) (“it is now well known that pornographers rely on misleading domain names
to attract users by confusion,
in order to generate revenue from click-through
advertising, mouse-trapping, and other pernicious online marketing
techniques”);
see also Youtv, Inc.
v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith
where Respondent attracted users to his website for commercial gain
and linked
his website to pornographic websites); see also Wells Fargo & Co.
v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding
that Respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith); see also Six Continents Hotels,
Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation
of Respondent, the diversion of the domain name to a pornographic site
is
itself certainly consistent with the finding that the Domain Name was
registered and is being used in bad faith”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <qwestmall.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 26, 2004
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URL: http://www.worldlii.org/int/other/GENDND/2004/865.html