Quibids Holdings LLC v. PRQ Inet KB / Gottfrid Swartholm
Claim Number: FA1112001421131
Complainant is Quibids Holdings LLC (“Complainant”), represented by Brody Stout of CitizenHawk, Inc., California, USA. Respondent is PRQ Inet KB / Gottfrid Swartholm (“Respondent”), Sweden.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <quibidsscams.org> and <quibidsscams.net>, registered with eNom, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2011; the National Arbitration Forum received payment on December 21, 2011.
On December 22, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <quibidsscams.org> and <quibidsscams.net> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2012 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 postmaster@quibidsscams.org and postmaster@quibidsscams.net. Also on December 30, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <quibidsscams.org> and <quibidsscams.net> domain names are confusingly similar to Complainant’s QUIBIDS mark.
2. Respondent does not have any rights or legitimate interests in the <quibidsscams.org> and <quibidsscams.net> domain names.
3. Respondent registered and used the <quibidsscams.org> and <quibidsscams.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Quibids Holdings LLC, operates an auction website, offering online auction service and online retail store services featuring a wide variety of consumers goods and gift cards. Complainant has registered its QUIBIDS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,870,521 registered November 2, 2010).
Respondent, PRQ Inet KB / Gottfrid Swartholm, registered the <quibidsscams.org> and <quibidsscams.net> domain names on June 3, 2011. The disputed domain names resolve to website offering a review of Complainant’s services/products but also advertising for competing products by diverting consumers, through a pay-per-click link, to a competitor’s website.
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 its QUIBIDS mark with the USPTO (Reg. No. 3,870,521 registered November 2, 2010). In previous cases, such as Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), panels have established that registration of a mark with a trademark authority like the USPTO grants rights in a mark under Policy ¶ 4(a)(i). Panels have also concluded that a USPTO registration is sufficient even when a respondent lives elsewhere. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel here therefore determines that Complainant has proven that it owns rights in the QUIBIDS mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <quibidsscams.org> and <quibidsscams.net> domain names are confusingly similar to Complainant’s QUIBIDS mark because they begin with the QUIBIDS mark, followed only by the generic term “scams” and either the “.org” or “.net” generic top-level domain (“gTLD”). The Panel holds that adding a generic term like “scam” does not affect the disputed domain name for purposes of distinguishing it under Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); 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)). The Panel also concludes that neither the “.org” nor “.net” gTLD defeats a claim of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). The Panel therefore finds that Respondent’s <quibidsscams.net> and <quibidsscams.org> domain names are confusingly similar to Complainant’s QUIBIDS mark according to Policy ¶ 4(a)(i).
The Panel deems Policy ¶ 4(a)(i) is satisfied.
In attempting to satisfy the requirements of Policy ¶ 4(a)(ii), Complainant must present a prima facie case against Respondent and then the burden shifts to Respondent to prove rights and legitimate interests. Although Complainant effectively made its initial case against Respondent, Respondent offered no answer or contentions in Response. As a result of Respondent’s lack of participation in these proceedings, the Panel may infer that Complainant’s contentions are accurate and that Respondent lacks rights and legitimate interests. See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002) (“In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.”); 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). As a result of Respondent’s lack of participation in these proceedings, the Panel may infer that Complainant’s contentions are accurate and that Respondent lacks rights and legitimate interests. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). In the interest of fairness, however, the Panel will continue the analysis according to the Policy ¶ 4(c) factors.
Complainant contends that Respondent is not sponsored by, or legitimately affiliated with, Complainant in any way and has not been given permission to use Complainant’s QUIBIDS mark. Complainant alleges that the WHOIS information for the disputed domain names lists the registrant as “PRQ Inet KB / Gottfrid Swartholm,” which provides no evidence of a nominal relationship between Respondent and the disputed domain names. Accordingly, the Panel may conclude that Respondent is not commonly known by the disputed domain names and consequently lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s disputed domain names resolve to websites that provide information purportedly reviewing Complainant’s products and services. Complainant also asserts, however, that the resolving website also advertises for Complainant’s competitor, ZBiddy Penny Auctions, by recommending Zbiddy and even providing a link to the Zbiddy website. Complainant contends that providing unauthorized information under Complainant’s mark and advertising for a competitor does not constitute 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). The Panel agrees with Complainant. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did 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)).
The Panel deems Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent’s use of the domain names to attract Internet users to a competing website disrupts Complainant’s business pursuant to Policy ¶ 4(b)(iii). The website displays a hyperlink to a business, ZBiddy Penny Auctions, in competition with Complainant’s business. Internet users may access Complainant’s competitor’s website through the disputed domain name, thereby disrupting traffic to Complainant’s website. The Panel finds that misdirecting Internet traffic to a competitor’s website and away from Complainant’s website is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant argues that Respondent’s registration use of the disputed domain names to misdirect Internet traffic to the corresponding websites for commercial gain demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Complainant contends that the domain names create uncertainty as to the affiliation between Complainant’s mark and the resolving websites’ hyperlink to Complainant’s competitor, ZBiddy Penny Auctions. The Panel finds that Respondent’s use of the disputed domain names to attract and confuse consumers to its website for financial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
The Panel deems Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <quibidsscams.org> and <quibidsscams.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 8, 2012
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