national arbitration forum

 

DECISION

 

Embarq Management Company v. BizZoo BizZoo.Biz

Claim Number: FA0706001015118

 

PARTIES

Complainant is Embarq Management Company (“Complainant”), represented by Nicola M. Shiels, 2001 Ross Avenue, Suite 3000, Dallas, TX 75201.  Respondent is BizZoo BizZoo.Biz (“Respondent”), 1320 N Court House, Arlington, VA 22201.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <business-embarq.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

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 electronically on June 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 22, 2007.

 

On June 22, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <business-embarq.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 16, 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 postmaster@business-embarq.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 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

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 <business-embarq.com> domain name is confusingly similar to Complainant’s EMBARQ mark.

 

2.      Respondent does not have any rights or legitimate interests in the <business-embarq.com> domain name.

 

3.      Respondent registered and used the <business-embarq.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Embarq Management Company, is a telecommunications provider in the United States.  Complainant has continuously and extensively used the EMBARQ mark since late 2005 and currently employs over 20,000 individuals in over 18 states.  Complainant also operates a website at the <embarq.com> domain name.

 

Complainant has registered the EMBARQ mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,211,948 issued February 20, 2007).

 

Respondent registered the <business-embarq.com> domain name on April 3, 2007.  Up until May 8, 2007, Respondent’s website at the disputed domain name contained copyrighted material from Complainant’s website and prominently displayed Complainant’s EMBARQ mark.  The website had data fields where Internet users could enter their personal and financial information as well.  The disputed domain name does not currently resolve to an active website.

 

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.  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.

 

Identical and/or Confusingly Similar

 

Complainant holds a trademark registration with the USPTO for the EMBARQ mark.  The Panel finds that this trademark registration sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See 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)); see also Toray Indus., Inc. v. Yassievich, FA 998100 (Nat. Arb. Forum July 12, 2007) (“The Panel finds that Complainant has established rights in the Trademark, by reason of its U.S. trademark registrations, which are valid and subsisting.  The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”).

 

Respondent has simply added the term “business” and a hyphen to Complainant’s EMBARQ mark in the <business-embarq.com> domain name.  In Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007), the panel found that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark.  As a result, Respondent in this case has also not adequately distinguished the disputed domain name from the EMBARQ mark by adding the term “business” under Policy ¶ 4(a)(i).  See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (finding that the addition of a term describing the complainant’s business to the complainant’s mark in a domain name made the disputed domain name more confusing, not less confusing, as the respondent claimed).

 

Moreover, panels have disregarded the addition of a hyphen to a complainant’s mark under Policy ¶ 4(a)(i), deeming it insignificant.  For example, the panel in Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 13, 2007) found that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i).  See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”).  Therefore, the Panel finds that the addition of a hyphen to Complainant’s EMBARQ mark in the <business-embarq.com> domain name is incapable of sufficiently distinguishing the disputed domain name pursuant to Policy ¶ 4(a)(i).

 

There is one other minor change that Respondent has made—the addition of the generic top-level domain (“gTLD”) “.com.”  Because a TLD must accompany all domain name registrations, however, this portion of the disputed domain name is irrelevant when analyzing confusing similarity.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); 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.”).

 

Consequently, Respondent’s <business-embarq.com> domain name does not contain any significant changes that would distinguish it from Complainant’s EMBARQ mark under Policy ¶ 4(a)(i).  Therefore, the <business-embarq.com> domain name is confusingly similar to the mark. 

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the <business-embarq.com> domain name.  If Complainant makes out a prima facie case, which it has in the instant proceeding, the burden of proof shifts to Respondent to show that it does have rights or legitimate interests.  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”).

 

Respondent has not responded to Complainant’s allegations.  Therefore, the Panel presumes that Respondent lacks rights and legitimate interests in the <business-embarq.com> domain name.  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 the respondent did not come forward to suggest any right or interest it may have possessed).  Nevertheless, the Panel will still examine the record to see if Respondent can establish any rights or legitimate interests under the factors listed in Policy ¶ 4(c).

 

According to the WHOIS information, the registrant of the <business-embarq.com> domain name is “BizZoo BizZoo.Biz.”  There is no other evidence in the record indicating that Respondent is commonly known by the disputed domain name, and Complainant alleges in its Complaint that it has not given Respondent the authority or a license to register the domain name in dispute.  As a result, Respondent cannot establish rights or legitimate interests under Policy ¶ 4(c)(ii).  See Educ. Broad. 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 has operated a website at the <business-embarq.com> domain name that imitates Complainant’s website, contains Complainant’s copyrighted material and logo, and prompts Internet users to enter their personal and financial information into data fields on the website in order to find out more information about Complainant’s products and services.  In The Gaming Board for Great Britain v. gaming board, D2004-0739 (WIPO Oct. 18, 2004), the panel concluded, “Creating a website which is a fraudulent and alleged copy of the [c]omplainant’s website is not evidence of a legitimate interest.”  Moreover, the panel in Bank for International Settlements v. BFIS, D2003-0984 (WIPO Mar. 1, 2004) found no rights or legitimate interests where the respondent was using the disputed domain name to “perpetrate a scam on Internauts by masquerading as [c]omplainant.”  Because similar circumstances exist in the present case, the Panel can characterize Respondent’s previous activities as “phishing,” which does not amount to a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii).

 

Respondent’s inactivity with respect to the <business-embarq.com> domain name for the past few months also does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.  In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel found that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name.  Similarly, in Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001), the panel concluded that the respondent did not have rights or legitimate interests in the <chanelparee.com> domain name where it did not respond to the complaint and had failed to use the domain name.  In line with these previous cases, the Panel finds that Respondent has failed to establish rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). 

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent was using the disputed domain name to operate a website that imitated Complainant’s website, posted copyrighted material, and prominently displayed Complainant’s EMBARQ mark.  By using the <business-embarq.com> domain name in this manner, Respondent was attempting to profit from the confusing similarity between the disputed domain name and Complainant’s registered EMBARQ mark.  The Panel finds such conduct to be indicative of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website); see also GMAC LLC v. WhoisGuard Protected, FA 924715 (Nat. Arb. Forum May 2, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”).

 

Moreover, Respondent’s attempt to acquire the personal and financial information of customers seeking information on Complainant’s products and services under the EMBARQ mark suggests that Respondent was engaged in a practice known as “phishing.”  The panel in Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) defined “phishing” as the “use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”  The Panel finds that Respondent’s conduct fits within this definition and, therefore, Respondent’s fraudulent phishing scheme provides further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Wells Fargo & Company v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith where the respondent registered the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

Although Respondent has ceased using the disputed domain name as of the filing of this Complaint, Respondent’s failure to make use of the <business-embarq.com> domain name provides further evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 13, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <business-embarq.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Louis E. Condon, Panelist

Dated:  August 1, 2007

 

 

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