Qwest Communications International, Inc.
v. NOVA 2001 a/k/a Martin Snytsheuvel
Claim
Number: FA0312000223005
Complainant is Qwest Communications International, Inc. (“Complainant”),
represented by Anthony J. Malutta, of Townsend and Townsend and Crew LLP, 2 Embarcadero Center, 8th Floor, San Fransisco, CA 94111. Respondent is NOVA 2001 a/k/a Martin Snytsheuvel (“Respondent”),
8900 Beach Front Drive, Las Vegas, NV 89117.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <qwestyellowpages.com>, registered with Register.com.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 31, 2003; the Forum received a hard copy of the
Complaint on December 31, 2003.
On
January 12, 2004, Register.com confirmed by e-mail to the Forum that the domain
name <qwestyellowpages.com> is registered with Register.com and
that Respondent is the current registrant of the name. Register.com has
verified that Respondent is bound by the Register.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
January 12, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 2, 2004 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@qwestyellowpages.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
February 24, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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 <qwestyellowpages.com>
domain name is confusingly similar to Complainant’s QWEST mark.
2. Respondent does not have any rights or
legitimate interests in the <qwestyellowpages.com> domain name.
3. Respondent registered and used the <qwestyellowpages.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 and serves over 30 million customers in the U.S. and abroad. Complainant began using the QWEST mark in
commerce in 1981. Complainant holds
several registrations for the mark with the U.S. Patent and Trademark Office
(“USPTO”), including Reg. Nos. 1,966,694 and 2,210,992 (registered on April 9,
1996 and December 15, 1998, respectively).
Complainant uses the mark for, among other things, its telephone
directory (“yellow pages”) services through its exclusive licensee Dex Media,
Inc. under the QWEST DEX mark.
Respondent
registered the <qwestyellowpages.com> domain name on October 21,
2001. Respondent uses the domain name
to direct Internet users to a travel directory page, which advertises that the
domain name is for sale.
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 domain name by registering the mark with the USPTO
and by its use in commerce since 1981. 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 the 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 <qwestyellowpages.com>
domain name is confusingly similar to Complainant’s QWEST mark because the
domain name fully incorporates the mark and merely adds the term “yellow
pages,” which is descriptive of Complainant’s business. The addition of the generic top-level domain
“.com” is irrelevant when determining whether a domain name is confusingly
similar to a mark under Policy ¶ 4(a)(i).
See Space Imaging LLC v. Brownwell, 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 Parfums Christian Dior v. 1
Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding that four domain
names that added the descriptive words "fashion" or
"cosmetics" after the trademark were confusingly similar to the
trademark); see also Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel
presumes that Respondent lacks rights and legitimate interests in the <qwestyellowpages.com>
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 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.”).
In addition,
Respondent was not authorized or licensed to register or use a domain name that
incorporates Complainant’s mark.
Moreover, the record fails to establish that Respondent is commonly
known by the <qwestyellowpages.com> domain name. Therefore the Panel concludes that
Respondent lacks rights and legitimate interests in the 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).
Also,
Respondent’s <qwestyellowpages.com> domain name resolves to a
website that advertises that the domain name is for sale. Respondent’s attempt to sell the domain name
does not demonstrate a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Mothers Against Drunk
Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that
under the circumstances, Respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083
(Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests
where Respondent registered the domain name with the intention of selling its
rights).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent had actual or constructive knowledge of Complainant’s mark
because the mark is fanciful, is registered within Respondent’s country of
residency and is famous worldwide.
Registration of a domain name confusingly similar to a mark, despite
knowledge of the mark holder’s rights, is evidence of bad faith registration
pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively”); see
also Victoria’s Cyber Secret Ltd. P’ship v. V
Secret Catalogue, Inc., 161 F.Supp.2d
1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of
a trademark or service mark] is constructive notice of a claim of ownership so
as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072);
see also G.D. Searle & Co. v. 24-7-Commerce.com, FA
114707 (Nat. Arb. Forum July 31, 2002) (finding that “[i]t is evident that
Respondent knew of Complainant’s rights in the CELEBREX mark” since
Complainant’s CELEBREX mark is a fanciful term, and Respondent uses the mark in
conjunction with marks of Complainant’s competitors); 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).
In addition,
Respondent’s <qwestyellowpages.com> domain name resolves to a
website that advertises that the domain name is for sale. Respondent’s advertisement that the domain
name is for sale is evidence that Respondent registered the domain name in bad
faith pursuant to Policy ¶ 4(b)(i). See Gen.
Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding
that Respondent registered and used the domain name in bad faith by using the
domain name to direct users to a general site offering the domain name for
sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (“general offers to sell the domain name, even if no certain
price is demanded, are evidence of bad faith”); see also Wrenchead.com, Inc. v. Hammersla,
D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale
at an auction site is evidence of bad faith registration and use).
Furthermore, Respondent’s registration and use of the <qwestyellowpages.com> domain name is
evidence of opportunistic bad faith because it is inconceivable that Respondent
could use the domain name in a manner that would not cause Internet user confusion
and disrupt Complainant’s business. See Twentieth
Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names
are so obviously connected with the Complainants that the use or registration
by anyone other than Complainants suggests ‘opportunistic bad faith’”).
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 <qwestyellowpages.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
March 8, 2004
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