Embarq Management Company v. PCC Privacy Block c/o PBCC PBCC
Claim Number: FA0706001010323
Complainant is Embarq Management Company (“Complainant”), represented by Nicola
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <embarqstores.com>, registered with Enom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 18, 2007.
On June 18, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <embarqstores.com> domain name 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 June 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 10, 2007 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <embarqstores.com> domain name is confusingly similar to Complainant’s EMBARQ mark.
2. Respondent does not have any rights or legitimate interests in the <embarqstores.com> domain name.
3. Respondent registered and used the <embarqstores.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, a telecommunications company, began using the EMBARQ mark in commerce in late 2005 and announced the formation of its business under the EMBARQ mark on February 1, 2006. It also began trading publicly on the New York Stock Exchange on May 18, 2006. Complainant’s telecommunications services include high-speed Internet, long distance calling, and local voice and data services. Over 20,000 employees in 18 states work for Complainant, and within its local service territories, it provides services to around 80% of the total potential customers in those areas.
Complainant operates a website at the <embarq.com> domain name. It has also registered the EMBARQ mark with the United States Patent and Trademark Office (Reg. No. 3,211,948 issued February 20, 2007, filed October 20, 2005).
Respondent’s <embarqstores.com> domain name, which it registered on July 8, 2006, resolves to a website at the <embarqphones.com> domain name, which displays links to Complainant’s competitors in the telecommunications industry.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 registered the EMBARQ mark with the USPTO. Although the USPTO issued this trademark registration after Respondent registered the disputed domain name on July 8, 2006, the Panel finds that Complainant’s rights in the mark date back to its filing date of October 20, 2005. Therefore, Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that a complainant’s rights in a registered trademark date back to the filing date); see also Hershey Co. et al. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (holding that the complainant established rights in the KISSES mark that predated the respondent’s registration of the disputed domain name because the complainant filed for a trademark registration for the mark before the respondent registered the disputed domain name, even though the USPTO did not issue the registration until after the respondent’s registration); see also FIA Card Servs., Nat’l Ass’n v. Impulse Mktg. Group, Net OPS, FA 944261 (Nat. Arb. Forum June 18, 2007) (holding that the complainant’s trademark registrations for the PLATINUM PLUS and WORLD CLASS PLATINUM PLUS marks, which it held with the USPTO, demonstrated its rights in the marks pursuant to Policy ¶ 4(a)(i)).
The <embarqstores.com> domain name contains Complainant’s EMBARQ mark in its entirety with the term “stores” and the generic top-level domain (“gTLD”) “.com” attached to the end. The Panel finds that the mere addition of a common term and a gTLD to Complainant’s mark fails to alleviate the confusing similarity between the disputed domain name and the mark pursuant to Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Anheuser – Busch, Inc. v. Holix Inc., FA 979961 (Nat. Arb. Forum June 19, 2007) (“The Panel accepts the consensus view of former panels that for the purposes of testing confusing similarity, the generic top-level domain (“gTLD”), “.com,” is to be ignored.”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant in the instant proceeding has made out a prima facie case under Policy ¶ 4(a)(ii).
Respondent’s failure to submit a Response raises a presumption that it has no rights or legitimate interests in the <embarqstores.com> domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”). However, the Panel will still examine the available evidence to see if it has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the domain name in dispute. Because Respondent has not come forward with any evidence establishing that it is commonly known by the <embarqstores.com> domain name, the Panel concludes that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Educ. Broadcasting Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also eLuxury.com, Inc. v. Sandulli, FA 960178 (Nat. Arb. Forum June 7, 2007) (finding that the respondent was not commonly known by the <eluxury.mobi> domain name where it was not known by the name at the time of registration and the complainant had not given the respondent a license).
Respondent’s <embarqstores.com> domain name
forwards Internet users to the <embarqphones.com> domain name, which
resolves to a website displaying links to Complainant’s competitors in the
telecommunications industry. The Panel presumes
that Respondent is earning click-through fees for each consumer it diverts to
competing websites. This use does not
represent a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Jerry Damson,
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s use of the <embarqstores.com> domain name to divert Internet users seeking Complainant’s products and services under the EMBARQ mark to a website displaying links to third-party websites constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). The Panel infers that Respondent receives referral fees for diverting Internet users to other websites and thus it is taking advantage of the confusing similarity between Complainant’s EMBARQ mark and the <embarqstores.com> domain name, and profiting from the goodwill associated with the mark. See eHealthInsurance Servs., Inc. v. Hasan, FA 982289 (Nat. Arb. Forum July 9, 2007) (“Respondent’s use of the disputed domain name to operate a pay-per-click website is indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because Respondent is profiting from click-through fees each time an Internet user clicks on one of the links that redirect them to websites competing with Complainant.”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
In addition, Respondent’s use of the <embarqstores.com> domain name to operate a website with links to other websites offering telecommunications products and services in direct competition with Complainant suggests that Respondent registered the <embarqstores.com> domain name in order to disrupt Complainant’s business under the EMBARQ mark in violation of Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <embarqstores.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 27, 2007
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