Qwest Communications International Inc.
v. Ling Shun Shing
Claim
Number: FA0308000187431
Complainant is Qwest Communications International Inc.,
Denver, CO (“Complainant”) represented by Anthony
J. Malutta, of Townsend and Townsend and Crew LLP. Respondent is Ling Shun Shing, Shanghai, China (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <qwestwirless.com>, registered with Iholdings.Com,
Inc. d/b/a Dotregistrar.Com.
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.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 19, 2003; the Forum received a hard copy of the
Complaint on August 20, 2003.
On
August 20, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail
to the Forum that the domain name <qwestwirless.com> is registered
with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the
current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has
verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com
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
August 21, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 10, 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@qwestwirless.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
September 24, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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. Respondent’s <qwestwirless.com>
domain name is confusingly similar to Complainant’s QWEST mark.
2. Respondent does not have any rights or
legitimate interests in the <qwestwirless.com> domain name.
3. Respondent registered and used the <qwestwirless.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
is one of the largest international telecommunication services companies in the
world. Complainant serves over 30
million customers in the United States and abroad. Complainant offers web hosting services, managed solutions,
high-speed Internet access, private networks, wireless data and other
technologies and applications that enable global communications. Complainant owns more than 385 active QWEST
trademark applications and registrations in more than 48 countries
worldwide. Complainant also holds
several registrations for the QWEST mark with the U.S. Patent and Trademark
Office (“USPTO”), including Reg. Nos. 1,966,694 (registered April 9, 1996) and
2,210,992 (registered December 15, 1998).
Complainant has used the QWEST mark in commerce since 1985. 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 <qwestwirless.com> domain name on October 4,
2002. Respondent uses the disputed
domain name to “mousetrap” Internet users in a series of pop-up
advertisements. The disputed domain
name links to several websites, including adult-oriented websites, gambling
websites and websites that sell cell phones.
Respondent also uses the <qwestwirless.com> domain name to
divert Internet users to the <chevronusa.com> website for which
Respondent receives a commission.
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.
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 rights in the QWEST mark through registration of the mark with the
USPTO and use of the mark in commerce since 1985. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
Respondent’s <qwestwirless.com>
domain name is confusingly similar to Complainant’s mark because the disputed
domain name fully incorporates the QWEST mark and merely adds the misspelled
descriptive term “wirless.” The word
“wireless” describes a service that Complainant provides; therefore,
Respondent’s addition of the word “wirless” to Complainant’s mark is
insufficient to circumvent the Panel from finding that the disputed domain name
is confusingly similar to Complainant’s mark.
See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum
Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of
confusing similarity).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
The record fails
to establish that Respondent is authorized or licensed to register or use
domain names that incorporate Complainant’s marks. The WHOIS information fails to establish that Respondent is
commonly known by the <qwestwirless.com> domain name or the QWESTWIRLESS.COM
mark. Therefore, the Panel concludes
that Respondent lacks rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question); see also Tercent, Inc. v. 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).
Furthermore, the
Panel presumes that Respondent is receiving click-through fees from the
Internet vendors that are linked to the <qwestwirless.com> domain
name. Respondent’s domain name provides
links to adult-oriented websites, gambling websites and websites that compete
with Complainant. Respondent’s attempt
to commercially benefit from the misleading domain name by way of click-through
fees earned via these links is evidence that Respondent is not using the
disputed domain name for a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Imation Corp. v.
Streut, FA 125759 (Nat. Arb. Forum Nov. 8, 2002) (finding no rights or
legitimate interest where Respondent used the disputed domain name to redirect
Internet users to an online casino); see also Black & Decker
Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002)
(holding that Respondent’s use of the disputed domain name to redirect Internet
users to commercial websites, unrelated to Complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use).
In addition,
Respondent has failed to contest the allegations of the Complaint, thus the
Panel may presume that Respondent lacks rights or legitimate interests in the
disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names), 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
It can be
inferred that Respondent had actual or constructive knowledge of Complainant’s
rights in the QWEST mark because the mark has been registered with the USPTO
and other authorities worldwide, the domain name fully incorporates the mark,
and the mark is recognized internationally.
Registration of a domain name, despite knowledge of Complainant’s
rights, is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes
actual or constructive knowledge of a commonly known mark at the time of
registration), see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”); see also Exxon Mobil
Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent
had actual and constructive knowledge of Complainant’s EXXON mark given the
worldwide prominence of the mark and thus Respondent registered the domain name
in bad faith).
Furthermore,
Respondent has attempted to commercially benefit from the misleading <qwestwirless.com>
domain name by linking the domain name to adult oriented websites, gambling
websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit
from the misleading domain name is evidence of bad faith pursuant to Policy ¶
4(b)(iv). See Encyclopaedia Britannica Inc. v. Shedon.com,
D2000-0753 (WIPO Sept. 6, 2000) (finding that Respondent violated Policy ¶
4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a
gambling site), see also 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 Youtv, Inc. v. Alemdar, FA
94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent
attracted users to his website for commercial gain and linked his website to
pornographic websites).
The Panel finds
that Policy ¶ 4(a)(iii) has been 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 <qwestwirless.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin. Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
October 6, 2003
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