Qwest Communications International Inc.
v. Domain Active Pty. Ltd.
Claim Number: FA0307000167914
Complainant is Qwest Communications International Inc.,
Denver, CO, (“Complainant”) represented by Anthony
J. Malutta of Townsend and Townsend and Crew LLP.
Respondent is Domain Active Pty. Ltd.,
Clayfield, Australia (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <qwestwireles.com> registered with Fabulous.com
Pty Ltd.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically July 3, 2003; the Forum received a hard copy of the Complaint July
3, 2003.
On
July 6, 2003, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that the
domain name <qwestwireles.com> is registered with Fabulous.com Pty
Ltd. and that Respondent is the current registrant of the name. Fabulous.com
Pty Ltd. verified that Respondent is bound by the Fabulous.com Pty Ltd. registration
agreement and 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
July 8, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of July
28, 2003, 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@qwestwireles.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 30, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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 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. The domain name registered by Respondent,
<qwestwireles.com>, is confusingly similar to Complainant’s QWEST
mark.
2. Respondent has no rights or legitimate
interests in the <qwestwireles.com> domain name.
3. Respondent registered and used the <qwestwireles.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds a number of trademark registrations in the United States and abroad,
including Reg. No. 1,966,694 registered on April 9, 1996 with the U.S. Patent
and Trademark Office (“USPTO”) for the QWEST mark in relation to telecommunication
services, namely the electronic transmission of voice, data and messages.
Complainant has
offered wireless telephone services under the QWEST WIRELESS mark since as
early as June 2000. Complainant markets these services in a variety of media,
including through a website located at the <qwestwireless.com> domain
name.
Respondent
registered the <qwestwireles.com> domain name August 7, 2002.
Respondent is using the disputed domain name to divert Internet traffic to a
variety of commercial websites unrelated to Complainant’s telecommunications
services.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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
established in this proceeding that it has rights in the QWEST mark through
registration with the USPTO.
The domain name
registered by Respondent, <qwestwireles.com>, is confusingly
similar to Complainant’s QWEST mark because the disputed domain name
appropriates Complainant’s entire mark and merely adds the nonsensical term
“wireles” to the end of Complainant’s mark. The addition of the gibberish term
“wireles” does not sufficiently distinguish Respondent’s domain name from
Complainant’s mark because the gibberish term is a simple misspelling of the
term “wireless,” a term that is directly related to Complainant’s business. See Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a Respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to Complainant’s
marks); see also Yahoo! Inc. and
GeoCities v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the
registration and use of multiple domain names incorporating the distinctive and
famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words
such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks
and likely to mislead Internet users into believing that products and services
offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities,
given the similarity of the names and products and services offered).
Accordingly, the
Panel finds that Complainant met the requirements of Policy ¶ 4(a)(i).
Complainant
established in this procedure that it has rights to and legitimate interest in
the QWEST mark and has alleged that Respondent has no such rights or legitimate
interests. Respondent did not file a Response. In such circumstances, the Panel
may accept all reasonable allegations and inferences in the Complaint to be
true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to
respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Furthermore, the
Panel presumes that Respondent lacks any rights to or legitimate interests in
the <qwestwireles.com> domain name because Respondent failed to
come forward with evidence to counter Complainant’s allegations and proof. 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 Respondent did not come forward to
suggest any right or interest it may have possessed).
Respondent is
using the disputed domain name to divert Internet users to a variety of
commercial websites unrelated to Complainant’s telecommunications services.
Respondent’s use of a domain name that is confusingly similar to a
Complainant’s mark to divert Internet traffic to a myriad of pop-up ads and
websites does not suggest a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Party Night Inc. and Peter
Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that Respondent’s use of confusingly similar derivatives of
Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up
advertisements was not a bona fide offering of goods or services); see also
WeddingChannel.com Inc. v. Andrey Vasiliev a/k/a NA and Free Domains Parking,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that Respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to
Complainant’s mark, websites where 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).
Moreover,
Respondent has come forward with no proof and no proof in the record suggests
that Respondent is commonly known by QWESTWIRELES or <qwestwireles.com>.
Thus, Respondent has failed to establish any rights to or legitimate interests
in the disputed domain name with regard to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
The
Panel finds that Complainant met the required showing under Policy ¶ 4(a)(ii).
The
circumstances of Respondent’s use of the domain name permits the Panel to find
that Respondent benefits financially from such diversionary use of the <qwestwireles.com>
domain name to inundate unsuspecting Internet users with a plethora of pop-up
ads and portal websites. The use of a domain name that is confusingly similar
to a Complainant’s mark to attract Internet users to Respondent’s website for
commercial gain by creating a likelihood of confusion with Complainant’s mark
as to the source, sponsorship, affiliation or endorsement of Respondent’s
website is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain).
Likewise,
Complainant has produced evidence to show that in the past Respondent
registered and used other domain names that are confusingly similar to
well-known marks. In the absence of any proof from Respondent to the contrary,
this evidence shows that Respondent has engaged in a pattern of domain name
registrations to prevent trademark or service mark owners from reflecting those
marks in a domain name. This is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(ii). See Playboy Enters. Int’l, Inc. v. Domain
Active Pty Ltd., D2002-1156 (WIPO Feb. 13, 2003) (finding Respondent’s
registration and use of more than 70 domain names incorporating the famous
PLAYBOY mark to be in bad faith);
see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718
(Nat. Arb. Forum Feb. 6,
2003) (transferring the <wwwmedline.com> domain name to Complainant).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iii).
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <qwestwireles.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 13, 2003.
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