DECISION

Qwest Communications International Inc. v. QC Publishing Group, Inc. and Victor Horne

Claim Number: FA0406000286032

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 QC Publishing Group, Inc. and Victor Horne (collectively, “Respondent”), represented by Victor Horne, 17822 Davenport Rd, Ste B, Dallas, TX 75252.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <qwestcorp.com>, registered with Register.com.

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.

Terry F. Peppard as Panelist.

PROCEDURAL HISTORY

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, Register.com confirmed by e-mail to the Forum that the domain name <qwestcorp.com> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 15, 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 by e-mail to postmaster@qwestcorp.com.

A timely Response was received and determined to be complete on July 1, 2004.

Respondent made an Additional Submission, also dated July 1, clarifying information contained in its initial submission.

On July 12, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Qwest Communications International Inc. is one of the largest telecommunications service companies in the world. It has been operating under the QWEST name and trademark in the United States since at least 1981.  The QWEST mark, which is registered in many jurisdictions around the world, is strongly associated by the general public with its telecommunications products and services.  That mark is also incorporated in Complainant’s <qwest.com> domain name.

Although Respondent does business under a name using the word “Quest,” it has registered and is using the disputed domain name, which includes Complainant’s famous and arbitrary QWEST mark, and has linked that domain name to its corporate website <qcpublishing.com>. The only difference between Complainant’s mark and the disputed domain name is Respondent’s inclusion of the generic term “corp,” which does not change the obvious reference to Complainant’s QWEST mark.

Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks, nor has it licensed or otherwise permitted Respondent to register or use any domain name incorporating any of those marks.

Respondent is not commonly known by the disputed domain name, and there is no correspondence between Respondent’s business names (“QC Publishing Group, Inc.” and “QuestCorp Publishing Group, Inc.”) and that domain name.

Respondent’s use of the disputed domain name results in confusion among Internet users and unfairly draws unknowing consumers to Respondent’s website.  Respondent must have registered the disputed domain name principally for the purpose of disrupting Complainant’s business. 

For a time, Respondent carried on its website a link to <mpower.com>, the website of Mpower Communications, a telecommunications company which is both a customer and competitor of Complainant.

B. Respondent

Respondent, incorporated in the state of Texas and based in Dallas, Texas, has been doing business as QuestCorp Publishing Group, Inc. since March of 2000.  QuestCorp is the informal name of this business, which produces magazines and targeted marketing materials for its clients.  

Respondent had as its sole motivation for registering the disputed domain name a legitimate interest in capturing otherwise lost business traffic caused by inadvertent misspellings of the company’s name (“QuestCorp”) among internet users.  Consistent with this motivation, Respondent has also registered the domain name <guestcorp.com>.

This has been done on the advice of business consultants who recommend that companies doing business on the Internet anticipate common misspellings of their business names, including phonetic equivalents, then register and use domain names with those common misspellings.

Many businesses throughout the United States have names beginning with “Qwest,” as is evidenced by the appearance of such names as “Qwest Auto Sales” and “Qwest for Excellence, Inc.” in the Dallas area phone directory.

Respondent’s website is devoted exclusively to promoting the company’s legitimate custom publishing business.  Respondent has made no effort either to compete with Complainant or to disparage its mark.  The QuestCorp logo, displayed on Respondent’s website, is distinctly different from that of Complainant, and Respondent’s website does not insinuate any association with Complainant or its business.

Respondent’s registration and use of the disputed domain name is fair and reasonable because “QwestCorp” is the exact phonetic equivalent of “QuestCorp.”  It would not be reasonable to permit Complainant to claim inherent rights in every possible derivative of its principal mark.

Mpower Communications was, until May of 2003, Respondent’s telecommunications provider and managed its website.  Mpower therefore hosted Respondent’s domain names on its server and provided Internet service to the company.  Respondent now operates its own server to host its websites, and there is no longer any relationship between Respondent and Mpower Communications. No inference of bad faith can properly be drawn from the former association. 

C. Additional Submission

Respondent’s Additional Submission merely corrects an editorial error in its original submission, and does not purport to change the pertinent facts.

FINDINGS

Complainant is the owner of a duly registered trademark, QWEST, used in connection with its telecommunications business, and Complainant has not licensed or otherwise permitted Respondent to use its mark or to include it in Respondent’s domain name.

The disputed domain name <qwestcorp.com> is confusingly similar to Complainant’s QWEST mark.

Complainant is not the exclusive holder of rights to business use of the word “Qwest.”

Respondent has, before receiving notice of the instant dispute, used the disputed domain name in connection with a bona fide offering of goods and services, and has thus acquired rights to and legitimate interests in that domain name.

Complainant has failed to show that Respondent has registered and is using the disputed domain name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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

It is undisputed that Complainant has rights to the registered QWEST mark in connection with its telecommunications business, and it is also beyond dispute that Respondent has incorporated the entirety of Complainant’s mark in its domain name.  It is well settled that inclusion of a registered mark in a domain name establishes, without more, the element of confusing similarity under Policy ¶ 4(a)(i).  See Oki Data Americas, Inc. v. Asdinc.com, D2001-0903 (WIPO Nov. 6, 2001); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Feb. 5, 2001); see also Nikon Inc. v. Technilab Inc., D2000-1774 (WIPO Mar. 7, 2001).

The addition of the generic term “corp” to Complainant’s mark to complete the disputed domain name does not change this result.  See BASF Aktiengesellschaft v. MostDomains.com, FA 117331 (Nat. Arb. Forum, Sep. 19, 2002); see also Burnham Corp. v. Domain Research and Sales, FA 102741 (Nat. Arb. Forum, Jan. 14, 2002).

Accordingly, Complainant has established to the satisfaction of the Panel that the <qwestcorp.com> domain name is confusingly similar to its QWEST mark within the meaning of Policy ¶ 4(a)(i).

Rights or Legitimate Interests

That Complainant has rights in its mark does not necessarily mean that Respondent cannot have rights to or legitimate interests in respect of a domain name which is confusingly similar to that mark.  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum, Apr. 11, 2003); see also K2r Produckte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000).

Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry.  The word “qwest,” a phonetic variant on the common word “quest,” while perhaps once unique, has over time acquired currency across a wide spectrum of business activity.  Respondent aptly points to the use of the word “Qwest” by a variety of business enterprises in the Dallas, Texas, area, including an auto sales firm.  A routine search of the Internet reveals similar instances, of which the Panel takes the equivalent of judicial notice, ranging from a charter yacht to a hotel to a line of recreational vehicles.

Respondent used the disputed domain name for approximately four years in connection with its custom publishing business before it became aware of this dispute.  That alone establishes in Respondent rights to and legitimate interests in the disputed domain name under Policy ¶ 4(c)(i).

For these reasons, the panel concludes that Complainant has failed to meet its burden of proof that Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant has the burden of proof as to all three elements of Policy ¶ 4(a).  Because Complainant has failed to establish the requirements of Policy ¶ 4(a)(ii), it is unnecessary for the Panel to consider the bad faith requirements of Policy ¶ 4(a)(iii).  However, the Panel notes that there is nothing in the proof submitted which is persuasive of the proposition that Respondent has proceeded in bad faith either in registering or in using the disputed domain name in the circumstances presented by this proceeding.  The Panel is particularly impressed by the facts that Respondent has operated its website for approximately four years for legitimate business purposes not in competition with Complainant’s business and with no evident intent to disrupt or divert traffic from that business.  See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum, Oct. 17, 2000).

The Panel therefore concludes that Complainant has also failed to meet its burden of proof under Policy ¶ 4(a)(iii).

DECISION

Complainant having failed to establish two of the three elements required under the ICANN Policy, the Panel concludes that relief must be, and it is, hereby, DENIED.

Terry F. Peppard, Panelist
Dated: July 23, 2004

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