Embarq Management Company v. BizZoo BizZoo.Biz
Claim Number: FA0706001015118
Complainant is Embarq Management Company (“Complainant”), represented by Nicola
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.
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.
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 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 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.
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 <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.
Complainant, Embarq Management Company, is a
telecommunications provider in the
Complainant has registered the EMBARQ mark with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 3,211,948 issued
Respondent registered the <business-embarq.com> domain name on
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 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
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
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).
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.
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
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).
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
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.
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.
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
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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