Quick Chek Corporation v. Dynamo.com LLC c/o Dynamo.com Whois Protection
Claim Number: FA1006001329173
Complainant is Quick Chek Corporation (“Complainant”), represented by Peter J. Pizzi, of Connell Foley LLP, New Jersey, USA. Respondent is Dynamo.com LLC c/o Dynamo.com Whois Protection (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quickchek.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.
Hon. Nelson A. Diaz as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2010.
On June 10, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <quickchek.com> domain name is registered with ENOM, INC. and that the 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 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com by e-mail. Also on June 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 6, 2010.
On July 12, 2010, an Additional Submission of the Complainant was received which complies with Supplemental Rule 7.
On July 12, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
As shown on the registration certificate, the Complainant has rights to the mark QUICK CHEK dating back to 1967 (registration dating back to May 2000). While registration of the QUICK CHEK mark post-dates the domain name registration (the domain name registration dating back to February 2000) the Complainant has common law rights to the subject mark and the family of related marks dating back to 1967 as well as statutory rights to the subject marks dating back to May 2000, and because the Respondent does not appear to be using the domain name in any manner, let alone in connection with a bona fide offering of goods or services. Respondent is not currently using the domain name in any way. At present, when visiting the domain in question, the site automatically forwards to a oneconomy.com site, displaying the “wowname” logo. The oneconomy.com site offers certain domain name registration and web hosting services
Respondent, Dynamo.com, is a long-established branding company executing name conception, logos and brand graphics, trademark research, and promotional copy for multi-national corporations including Intel, Procter and Gamble, and Time Warner, Inc. The company QUICKCHEK/ORDERCHECKS is a retailer of personalized bank checks founded in Seattle, Washington in February 2000. Respondent registered the domain name QUICKCHEK.COM in February 2000 as the new and non-infringing trademark name for the QUICKCHEK/ORDERCHECKS entity. Complainant had no trademark registration until over a year and a half after Respondent acquired QUICKCHEK.COM. Issues of common-law trademark should not be raised where, at the time of domain registration there was not a single online reference to the Complainant. Respondent and QUICKCHEK/ORDERCHECKS were Seattle companies at the time of registration and there was no New York office until 2004. Virtually all of Complainant's trade is confined to a 30-mile radius in New Jersey. In 2004, prior to any contact or dispute concerning the QUICKCHEK.com name, Respondent registered QUICKCHEQUE.COM to serve the Australian and European market.
C. Additional Submissions
Complainant alleges that there is no documentary support that any business or entity called“QUICKCHEK/ORDERCHECK” existed at any time. There is no documentary support that“QUICKCHEK/ORDERCHECK” was ever a company based in Seattle. In fact, none of the key assertions upon which Dynamo.com relies upon in its Response is supported by documentary evidence
Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use, were violated by the Respondent.”
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 submitted evidence showing that it owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its QUICK CHEK mark (e.g., Reg. No. 2,490,372 filed May 5, 2000; issued Sept. 18, 2001). The Panel finds that Complainant has established rights in its QUICK CHEK mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
However, Respondent’s registration of the disputed domain name on February 9, 2000 predates both the filing date and registration date of Complainant’s mark. Therefore, the Panel finds that a trademark registration is not necessary for Complainant to establish rights under Policy ¶ 4(a)(i), as long as Complainant is able to show that it possesses common law rights in its mark through an established secondary meaning attached to its mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant alleges that it has been operating in commerce under the QUICK CHEK mark since 1967. Complainant asserts that its trademark application refers to its “first use” of its mark as being in 1967, and that it has continuously used its mark since that time. The Panel finds that Complainant has established common law rights in its mark under Policy ¶ 4(a)(i). See Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that the complainant’s listing of first use of the BOB JONES UNIVERSITY mark on its USPTO registration information establishes that the complainant had used the mark continuously and extensively since the time of first use, thereby establishing rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant further argues that Respondent’s <quickchek.com> domain name is identical to its QUICK CHEK mark. Complainant notes that the only changes made to its mark are the deletion of the space between the terms of the mark, and the addition of the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that the <quickchek.com> domain name is identical to Complainant’s QUICK CHEK mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent has not used the disputed domain name, and therefore could not have become commonly known by the domain name. Further, Complainant argues that it has not granted Respondent permission to use its mark in any way. The Panel finds that the WHOIS information identifies “Dynamo.com LLC” as the registrant of the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Complainant alleges that Respondent’s disputed domain name resolves to the third-party website located at <oneconomy.com> that offers pay-per-click advertising and hyperlinks to websites unrelated to Complainant’s convenience store business. Complainant argues that Respondent’s use of the disputed domain name is evidence that Respondent lacks rights and legitimate interests in the domain name. Complainant contends that Respondent’s use of the disputed domain name to display third-party links to unrelated businesses and websites is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the disputed domain name to display third-party links and advertisements to businesses unrelated to Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Complainant contends that Respondent has the disputed domain name resolving to the third-party website <oneconomy.com>, and that Respondent is using the disputed domain name to collect click-through fees from the third-party links displayed through the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s goods to advertisements and third-party links of businesses unrelated to Complainant is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See 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)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generat-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <quickchek.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Nelson A. Diaz (ret.), Panelist
Dated: July 14, 2010
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