Qwest Communications International Inc.
v. Qwest Networking a/k/a Domain Administration
Claim
Number: FA0402000238004
Complainant is Qwest Communications International Inc. (“Complainant”), represented by Anthony J. Malutta, of Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111. Respondent is Qwest Networking a/k/a Domain Administration (“Respondent”),
18 Oakridge Ave., Salem, NH 03079.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <qwestcommunications.net>, 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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 20, 2004; the Forum received a hard copy of the
Complaint on February 23, 2004.
On
Feburary 26, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <qwestcommunications.net> is registered with Enom, Inc. and
that 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
March 1, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 22, 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@qwestcommunications.net 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
March 26, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Louis E. Condon 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 <qwestcommunications.net>
domain name is identical to Complainant’s QWEST COMMUNICATIONS mark.
2. Respondent does not have any rights or
legitimate interests in the <qwestcommunications.net> domain name.
3. Respondent registered and used the <qwestcommunications.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Qwest Communications, is a large international telecommunications
corporation. It has operated under the
QWEST name since as early as 1981, and under the Qwest Communications name
since 1992. Complainant has registered
the QWEST marks (Reg. Nos. 1,966,694, 2,210,922, and 2,513,382, registered on
April 9, 1996, December 15, 1998, and November 27, 2001, respectively) and
QWEST COMMUNICATIONS mark (Reg. No. 1,979,485, registered on June 11, 1996)
with the U.S. Patent and Trademark Office (“USPTO”).
Respondent,
Qwest Networking a/k/a Domain Administration, registered the <qwestcommunications.net>
domain name on October 20, 2003.
The domain name redirects Internet users to <crucialservers.net>—a
website marketing “Collocation and Internet solutions.” Complainant also alleges that Respondent has
listed the disputed domain name registration on eBay for sale, at a starting
price of $700.
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
rights in the QWEST COMMUNICATIONS mark determined by its use of the mark in
commerce and registration with the USPTO.
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).
The <qwestcommunications.net>
domain name is identical to Complainant’s QWEST COMMUNICATIONS mark. The only differerence is the omission of the
space between the words, which does not significantly distinguish the domain
name from the mark. See Technology Prop., Inc. v. Burris, FA
94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name
<radioshack.net> is identical to Complainant’s mark, RADIO SHACK); see
also Croatia Airlines v. Kwen Kijong,
AF-0302 (eResolution Sept. 25, 2000)
(finding that the domain name <croatiaairlines.com> is identical
to Complainant's CROATIA AIRLINES trademark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent is
using the disputed domain name, which is identical to Complainant’s mark under
the Policy, to market computer and technology business services. By appropriating Complainant’s mark to
market its services, Respondent is not using the disputed domain name for a
bona fide offering of goods or services, pursuant to Policy ¶ 4(c)(i), or making
a legitimate noncommercial or fair use of the domain name, pursuant to Policy ¶
4(c)(iii). See FAO Schwarz v.
Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or
legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and <faoswartz.com> where Respondent was using
these domain names to link to an advertising website); see also Ziegenfelder Co. v. VMH
Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests based on the fact that the domain names bear no
relationship to the business of Respondent and that Respondent would only
legitimately choose to use Complainant’s mark in a domain name if Respondent
was seeking to create an impression that the two businesses were affiliated).
The Panel
determines that, because of the fame of Complainant’s mark, Respondent does not
have rights or legitimate interests in the <qwestcommunications.net>
domain name, despite the presence of the word “qwest” in the domain name
registration WHOIS informaton. See
Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan.
13, 2003) (noting that “Complainant has
established itself as the sole holder of all rights and legitimate interests in
the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by
the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus”
in its WHOIS contact information); see also Yoga Works, Inc.
v. Arpita d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not
“commonly known by” the <shantiyogaworks.com> domain name despite
listing its name as “Shanti Yoga Works” in its WHOIS contact information
because there was “no affirmative evidence
before the Panel that Respondent was ever ‘commonly known by’ the disputed
domain name prior to its registration of the disputed domain name”).
The Panel finds
that Complainant has established Policy ¶ 4(a)(ii).
Respondent is
appropriating Complainant’s mark to sell its computer services. Registering and using a domain name that is
identical to another’s mark for commercial purposes is bad faith, pursuant to
Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where
Respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to
Respondent’s site).
Respondent is
also offering the disputed domain name for sale on eBay, with a starting price
of $700. Although Respondent is using
the domain name, the listing of the domain name on eBay (with a 5-day bidding
period on February, 27, 2004) demonstrates that Respondent has not established
goodwill under the <qwestcommunications.net> domain name. Therefore, the Panel infers that the only
reason that Respondent has registered the domain name is to sell the domain
name registration for conssideration in excess of out-of-pocket costs, pursuant
to Policy 4(b)(i). See 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); see also
Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA
156839 (Nat. Arb. Forum June 23, 2003) (finding that when the domain name
itself notes that it is “available for lease or sale,” evidence that the domain
name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be
inferred from the fact that “the sole value of the [<wwwdinersclub.com]
domain name is dictated by its relation to Complainant’s registered DINERS CLUB
mark).
The Panel finds
that Complainant has established Policy ¶ 4(a)(iiii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <qwestcommunications.net> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
April 8, 2004