DECISION

 

Qwest Communications International Inc. v. NetQwest Inc.

Claim Number: FA0404000287150

 

PARTIES

Complainant is Qwest Communications International Inc. (“Complainant” ), represented by Anthony J. Malutta, of Townsend, Townsend & Crew LLC, Two Embarcadero Center, San Francisco, CA 94111-3834.  Respondent is NetQwest (“Respondent”), P.O. Box 111, Schererville, IN 46375.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <netqwest.com> (the “Domain Name”) registered with Tucows, Inc. (the “Registrar”).

 

PANEL

The undersigned certifies that he 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.

 

Michael Albert as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 16, 2004; the Forum received a hard copy of the Complaint on June 17, 2004.

 

On June 17, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <netqwest.com> is registered with Tucows, Inc. and that the Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows 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 June 18, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail.

 

A timely Response was received and determined to be complete on July 8, 2004.

 

On July 14, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Michael Albert as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

            A. Complainant

 

            Complainant contends as follows:

 

• In 1996, complainant obtained U.S. Reg. No. 1,966,694 for the mark QWEST. Complainant is the owner of the QWEST mark and numerous associated registrations around the world. 

 

•QWEST is a strong, arbitrary mark in connection with which Complainant offers “a wide range of telecommunication goods and services.”  Several previous panels have taken note of the mark’s strength and ordered the transfer of similar domain names to Complainant.

 

•Respondent uses the Domain Name in connection with telecommunications services that are “identical” to those that Complainant offers under its mark.

 

•The <netqwest.com> Domain Name is “identical” to Complainant’s QWEST mark. Despite the addition of the generic word “net,” the Domain Name refers to the telecommunications services that Complainant provides under its QWEST mark. Complainant actively promotes its Internet services, and customers are likely to add “net” to the underlying QWEST mark and thus create the name in dispute.

 

•Respondent has no rights or legitimate interests in the domain name.

 

•Respondent is not commonly known by the name, as is evident from the absence of records in several directories and the Complainant’s apparent failure to maintain an address for business communications.

 

•Further, respondent is not licensed to use the QWEST mark.  By utilizing the <netqwest.com> Domain Name and claiming to be a “complete nation-wide Internet Service Provider (ISP),” Respondent nevertheless creates the commercial impression that it is affiliated with Complainant.

 

•Respondent registered and is using the Domain Name in bad faith.

 

•The use of the Domain Name disrupts Complainant’s business because actual and potential customers are routed to Respondent’s website, which entices them with Internet services that compete with those that Complainant offers under the QWEST mark.  Respondent uses the Domain Name even though it could have selected some other designation that conveyed the nature of its website without disrupting Respondent’s business activities.

 

•Respondent also registered the Domain Name in order to preclude Complainant from reflecting its principal service mark in corresponding domain names.

 

•People are likely to confuse the <netqwest.com> Domain Name with Complainant’s QWEST mark.  Since the arbitrary word constitutes the dominant portion of the Domain Name, consumers would expect Complainant to operate the associated site.

 

B. Respondent contends as follows:

 

•Prior to registering the Domain Name, Respondent conducted research and found no record of any United States record for the NETQWEST mark. Complainant has never attempted to trademark the name, nor does it control the NETQWEST mark in any generic top-level domain (“gTLD”). Indeed, the name remains available in several domains (e.g., <netqwest.org>).

 

•The Domain Name is neither identical nor confusingly similar to the Complainant’s mark. Instead, it simply comprises abbreviations of  INTERNET, QUEST, and MIDWEST. Respondent’s logo consists of this contrived word, with the Q stylized to resemble a mariner’s wheel. The mark is “not remotely identical or confusingly similar” to Complainant’s logo. Consumers see Respondent’s logo immediately after entering the <netqwest.com> Domain Name.

 

•Respondent never intended to copy Complainant’s mark, but rather selected the three terms based on a good faith belief that they were generic and thus unprotected.

 

•There are 1,034 currently registered Domain Names that include the letters Q-W-E-S-T, and Complainant’s sole motive in bringing the action was to harass Respondent.

 

•Respondent has rights and legitimate interests in <netqwest.com>.

•Respondent has used the Domain Name for almost six years in connection with the bona fide offering of Internet access and other computer-related services.  Respondent has thereby acquired common-law rights in the mark.

 

•There is a “fundamental distinction” between “Telecommunications Service” companies like Complainant and Internet Service Providers like Respondent, for the latter only provide computer-related services.

 

•Respondent has the technical capacity to provide nation-wide Internet access and therefore is entitled to advertise this fact on the website to which the <netqwest.com> Domain Name points.

 

•Respondent also has rights and legitimate interests in the Domain Name because Respondent is and always has been known by the name NETQWEST.COM.  The minutes from a board of directors’ meeting and several service invoices confirm this fact, as does the National Arbitration Forum’s successful delivery of the Complaint.

 

•In the course of arguing that Respondent has not been commonly known by the Domain Name, Complainant’s counsel made several representations that were false or misleading.  Two of the addresses that Complainant used when attempting to contact Respondent are not listed in the WHOIS record.  In addition, an email message sent in November 2001 successfully reached Respondent.

 

•The Complaint itself falsely implies that three certified letters were returned as undeliverable rather than simply as unclaimed.

 

•The mischaracterization of facts in the Complaint and Declaration warrants a finding that Complainant brought the action in bad faith.

 

•Respondent did not register <netqwest.com> in bad faith:

 

•Respondent did not register <netqwest.com> in an effort to divert customers from Complainant.  Allegations to the contrary are purely speculative, particularly given Complainant’s failure to present evidence suggesting marketplace confusion.  In addition, neither the search-engine metatags associated with the <netqwest.com> Domain Name nor the actual contents of Respondent’s website mention Complainant or imply any sort of affiliation. Respondent’s customers have instead come to associate <netqwest.com> with the name of Respondent’s own website.

 

•Respondent did not register <netqwest.com> in order to transfer the Domain Name to another party and reap a financial gain in the process. 

 

•Respondent did not register <netqwest.com> in order to prevent Complainant from reflecting the mark in a corresponding Domain Name, and Complainant presents no evidence to this effect. Such a finding is indeed impossible because Complainant has made no effort to trademark NETQWEST.  Likewise, nothing suggests that Respondent has engaged in a pattern of such conduct.

 

•Respondent did not register <netqwest.com> in order to disrupt Complainant’s business. Complainant failed to produce any evidence of such a motive, nor did it ever ask Respondent to stop using the Domain Name.

 

FINDINGS

 

The Panel finds that Complainant has established that it owns the QWEST mark, which is confusingly similar to the Domain Name.  The Panel finds that Respondent has not established that it has any legitimate rights to the Domain Name in that it has not persuasively established that it is (a) engaged in the “bona fide” offering of services or (b) commonly known by the Domain Name.  Finally, the Panel finds that Complainant has established that Respondent has registered and used the Domain Name in bad faith. 

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a             trademark or service mark in which the Complainant has rights;

            (2) the 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.

 

            Identical or Confusingly Similar

 

Complainant has established rights in the QWEST mark (“Complainant’s mark”) through registration of the mark with the  United States Patent and Trademark Office (USPTO) and use of the mark in commerce since 1985.   See Men’s Wearhouse, Inc. v. Wick, No. 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, No. D2002-0201 (WIPO Mar. 5, 2002) (citing prior panel decisions holding that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive).  Respondent makes no attempt to rebut the presumption that Complainant’s mark is valid.

 

In comparing Complainant’s mark to the Domain Name, the Panel must ignore the generic top-level domain, in this case ".com," because it is simply a generic element and indeed a functional necessity.  See Sporty’s Farm v. Sportsman’s Market, 202 F.3d 489, 498 (2d Cir. 2000); College Summit, Inc. v. Yarmouth Educ. Consultants, Inc., No. D2000-1575 (WIPO Jan. 17, 2001).

 

The Panel nevertheless is puzzled by Complainant’s suggestion that “the <netqwest.com> Domain Name is identical to Qwest’s famous QWEST mark” (emphasis added), particularly since Complainant itself acknowledges that the addition of the word “net” constitutes a “difference” between the domain name and the mark.  Two things that are different are not identical.  While “net” (when preceded by a dot) can function as a generic top-level domain, that is not the manner in which it is used here.  Instead, the word “net” has been added to the mark QWEST in forming the Domain Name’s second-level component.  See Am. Online Inc. v. Neticq.com Ltd., No. D2000-1606 (WIPO Feb. 12, 2001) (concluding that <neticq.com> was confusingly similar to Complainant’s ICQ mark, but not suggesting that the two were identical ); cf. Reuters Ltd. V. Global Net 2000, Inc., No. D2000-0441 (July 13, 2000), (determining that <wwwreuters.com> was confusingly similar to Complainant’s REUTERS mark).

 

The only way in which the Domain Name could be deemed “identical” to Complainant’s mark is if Complainant were to have established that it owned rights in the mark NETQWEST.  There is no basis in the record to conclude that Complainant owns any such rights.  Complainant’s assertion that the mark and the Domain Name are “identical” is baseless.

 

That is not, however, the end of the analysis of the first element to be proven.  The remainder of the inquiry is whether the Domain Name is confusingly similar to the QWEST mark.  Complainant asserts (in its discussion of Respondent’s alleged bad faith) that consumers are likely to be confused by Respondent’s use of <netqwest.com>.  Respondent argues that the Domain Name is neither identical nor confusingly similar to Complainant’s mark.  The Panel therefore turns to that question.

Accepting arguendo Respondent’s rather implausible characterization of the <netqwest.com> Domain Name as an amalgam of three arguably generic words (INTERNET, QUEST, AND MIDWEST), the Panel nevertheless concludes that the resulting term is confusingly similar to Complainant’s QWEST mark.  Internet users have no reason to know of the rationale behind a registrant’s choice of a particular domain name, and Respondent offers no evidence that its Domain Name would be understood as referencing or combining the above three terms.  It seems far more likely that Internet users will perceive the Domain Name as the combination of the generic word NET and the distinctive mark QWEST.  It is well established that the addition of a generic or descriptive term to an otherwise strong trademark does not necessarily eliminate or even reduce the risk of confusion between the mark and domain name at issue.   See, e.g., Savin Corp. v. Mowbray, No. FA 103869 (Nat. Arb. Forum, Mar. 1, 2002) (finding <savincity.com> identical or confusingly similar to SAVIN); Nat’l Ass’n for Stock Car Auto Racing, Inc. v. Imaging Solutions, No. D2001-0777 (WIPO Aug. 13 2001) (concluding that <officialnascar.com> was confusingly similar to Complainant’s NASCAR mark); MasterCard Int’l Inc. v. John Henry Enterprises, No. D2001-0632 (WIPO June 28, 2001) (deciding that the addition of the word “international” to the trademark "MasterCard" did not eliminate confusion); AT&T Corp. v. Fred Rice, No. D2000-1276 (Nov. 25, 2000) (finding that addition of the word “global” to a distinctive mark did not eliminate the likelihood of confusion).  Respondent draws the Panel’s attention to the decision in Schimpff v. Sumpton, No. FA9433 (Nat. Arb. Forum June 16, 2000), but that case is readily distinguishable because the second-level domain name at issue consisted entirely of a generic word and was accordingly available on a first-come basis. Here, Respondent never suggests that NETQWEST is itself generic or descriptive.

 

While it is of course possible for the addition of a generic or descriptive word to alter the sense of a distinctive mark and thus obviate confusion, the Panel concludes that the addition of “net” does not alter the impression created by the incorporation of Complainant’s distinctive QWEST mark.  On the contrary, the extra element may actually increase the risk of confusion, because the term “net” (short for “Internet” as Respondent admits) may suggest that the Domain Name is where Complainant’s Internet-related services may be located.  Several previous panels have concluded that a domain name incorporating both a mark and a term referring to the goods or services sold under that mark may actually be more confusing than a domain name incorporating the mark alone.  See Am. Online, No. D2000-1606 (“[t]he addition of a word like "net", which is a basic term in the IT vocabulary, strengthens the impression that the domain name is associated with or controlled by ICQ”); State Farm Mut. Auto. Ins. Co. v. All Phase Builders, No. FA 99608 (Nat. Arb. Forum, Oct. 11, 2001) (finding confusing similarity between STATE FARM and <statefarm-claims.com>);  Magnum Piering, Inc. v. Mudjackers, No. D2000-1525 (WIPO, Jan. 29, 2001) (concluding that the addition of terms like PIER increased the likelihood of confusion because the complainant’s mark was in the field of piering services); Advance Magazine Publishers Inc. v. Buy This Domain, No. D2002-0803 (WIPO Nov. 1, 2002) (“if anything, the inclusion of ‘mag’ may tend to heighten Internet users’ confusion in differentiating between” <vougemag.com> and the VOGUE mark”); Gerber Prod. Co. v. Cybertexx.com, No. FA 257646 (Nat. Arb. Forum June 15, 2004) (“The addition of the generic terms ‘baby’ and ‘foods’ to Complainant’s GERBER mark only increases the likelihood of confusion, as Complainant is primarily known for its baby food products.”).

 

Here, the Respondent’s use of an abbreviation for “Internet” simply increases the chance that consumers will assume that <netqwest.com> is somehow connected with Complainant and its QWEST mark.  While Respondent maintains that there is a “fundamental distinction” between Internet Service Providers like itself and “Telecommunications Service” companies like Complainant, Respondent never contests the fact that Qwest provides Internet services. One of Respondent’s own exhibits, a copy of the index page from Complainant’s website as it appeared on July 7, 2004, includes a prominent reference to “Internet/DSL.” Two marks can be confusingly similar even if the sets of goods and services sold under them overlap only partially; they need only be related.  Here, Complainant’s and Respondent’s services are clearly related, and even overlap as both offer Internet services. Internet users accessing the web site located at <netqwest.com> might believe they have located Complainant’s Internet services. The fact that Complainant is also involved with fiber optic networks and offers a variety of services unrelated to the Internet is accordingly of little relevance.

 

Although Respondent draws the Panel’s attention to the 1,037 Domain Names registered as of July 4, 2004 that include the letters Q-W-E-S-T, the fact that the sequence is “commonly used on the Internet” does not establish that it is commonly used in connection with the provision of Internet services.  Indeed, none of the Domain Names listed in the excerpt provided by Respondent feature any words or letters that one would commonly associate with such an offering.

 

Despite Respondent’s implication to the contrary, the Panel likewise concludes that a comparison of the respective logos is irrelevant to the question of confusing similarity.  Paragraph 4(a)(i) of the Policy refers to identity or similarity between a respondent’s “domain name” and a complainant’s “trademark or service mark.”  Therefore, the Panel’s comparison must be limited to the words and characters in the Domain Name and Complainant’s mark.  Peeking behind the curtain to examine Respondent’s logo is inappropriate, because, while a trademark may consist of or include a logo, a domain name (at least at present) cannot.  As such, what happens after one’s browser resolves a site is generally irrelevant to the decision whether the disputed Domain Name itself is confusingly similar to a Complainant’s mark.  Cf. Diamond v. Goldberg, No. FA 237446 (Nat. Arb. Forum Apr. 5, 2004) (finding respondent’s argument concerning the content of the website irrelevant to issue).

 

Respondent’s other arguments regarding similarity are similarly unavailing.  An alleged good faith belief that terms are generic and thus unprotected has little if any bearing on the question of whether consumers are likely to be confused by their use in a Domain Name.  Nor does Complainant’s failure to obtain trademark protection for the term NETQWEST, or to register corresponding domain names in other gTLDs, preclude a finding of confusing similarity.  It is not necessary for trademark holders to anticipate and preemptively register “derivative marks” that might create confusion with existing trademarks or service marks.  That is why Section 4(a)(i) permits claims where the marks are not identical but are “confusingly similar.”

 

            Rights or Legitimate Interests

 

To prevail in the second prong of the Policy’s test, Complainant must establish that Respondent has no rights or legitimate interests in the Domain Name.  Paragraph 4(c) describes three illustrative means by which Respondent could demonstrate its rights and rebut Complainant’s assertion.  Here, Complainant and Respondent have both presented arguments and evidence concerning only two of these circumstances.  First, the parties dispute whether Respondent uses the domain name in connection with a “bona fide offering of goods or services.”  In addition, they disagree whether Respondent has “been commonly known by the domain name.”  The Panel addresses these issues in turn and concludes that Respondent has no rights or legitimate interest in <netqwest.com>.

 

Paragraph 4(c)(i): Bona fide offering of goods or services

 

While Complainant does not dispute the fact that Respondent uses <netqwest.com> to offer Internet services, it apparently contends that the offering is not “bona fide.” Numerous previous panels have concluded that parties are not engaged in bona fide activities when they sell goods or services while benefiting from the goodwill associated with a competitor’s trademark.  See, e.g., Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Co., No. D2000- 0878 (WIPO Sept. 21, 2000) (determining that respondent had no rights or legitimate interest in <canoninkjet.com> despite using the domain name to sell inkjet cartridges); The Chip Merchant, Inc. v. Blue Star Elec., No. D2000-0474 (WIPO Aug. 21, 2000); Vinotemp Int’l Corp. v. Am. Wine Essentials, No. FA 102740 (Nat. Arb. Forum Jan. 16, 2002); Ameritrade Holdings Corp. v. Polanski, No. FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (“Respondent’s use of the disputed domain name to redirect users to a site offering services related to and competing with Complainant’s site cannot be deemed a bona fide offering of goods or services under Policy ¶ 4(c)(i).”); Computerized Sec. Sys., Inc v. Hu, No. FA 157321 (Nat. Arb. Forum June 23, 2003) (“The Respondent’s use of a domain name confusingly similar to Complainant’s mark to sell goods in direct competition with Complainant’s goods is [not] a bona fide offering of goods or services pursuant to Policy 4(c)(i).”); C & E Fein GmbH & Co. v. Mierendorff, No. FA 183729 (Nat. Arb. Forum Oct. 1, 2003) (“Relevant law states that no legitimate or bona fide use or interest in the domain name can be found when a Eespondent, who is selling competing goods or services, is diverting consumers to its own website by using a Complainant’s trademark in its domain name.”).

 

Other Panels have taken a seemingly more literal view of paragraph 4(c)(i) and its reference to the “bona fide” offering of goods and services.  Most of these decisions concern Complainants and Respondents that were not direct competitors.  See, e.g., Am. Online, Inc. v. Albanese, No. D2000-1604 (WIPO Jan. 25, 2001) (holding that Respondent had rights or legitimate interests in <aoltrader.com> because it used the domain name in connection with the provision of online stock brokerage services). Others involve Respondents that marketed goods or services provided by Complainants. See, e.g., Canon U.S.A. Inc. v. Sims, No. D2000-0819 (WIPO Oct. 16, 2000) (denying complainant’s request for transfer of <canoncopymachines.com> after concluding that Respondent had used the domain name in connection with its copier remanufacturing and sales business prior to receiving notice of the dispute).  At least two panels have applied similar analysis in cases involving a Respondent who competed with the Complainant without actually marketing any of the complainant’s products or otherwise enjoying a business relationship.  See Modern Props, Inc. v. Wallis, Case No. FA 152458 (Nat. Arb. Forum June 2, 2003); Bankinter S.A. v. BI Financial Inc., Case No. D2000-0460 (WIPO Sep. 5, 2000).  However, the Respondent in Modern Props had begun using the disputed Domain Name for its prop rental business before the Complainant sought to register the mark at issue.  The Respondent accordingly had no constructive knowledge of the trademark.  The Panel in Bankinter likewise never determined whether the disputed Domain Names were confusingly similar to the Complainant’s mark.

 

The Panel is unaware of any decisions in which Panels have held that a Respondent’s use of a Domain Name identical or confusingly similar to a complainant’s previously registered mark constitutes a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy when the Respondent competes with the Complainant but does not provide any of the Complainant’s goods or services.

 

Here, Respondent and Complainant both offer Internet services, but Respondent does not market any of Complainant’s products and accordingly cannot plausibly claim a legitimate interest in using the mark.  Respondent had constructive notice of Complainant’s QWEST mark and knew or should have known that the Domain Name was confusingly similar to the mark for the reasons discussed above.  Respondent stands to benefit from that confusion. In view of these facts and the panel decisions cited above, the Panel concludes that the Respondent was not engaged in a “bona fide” offering of goods or services.

 

Paragraph 4(c)(ii): “Commonly Known By the Domain Name”

Based upon the evidence presented by the parties, the Panel concludes that Respondent has not been “commonly known” by the NETQWEST mark.  Complainant offers relatively little evidence in support of its argument, and much of the evidence that it does present establishes little more than Respondent’s lack of interest in communicating with Complainant’s counsel.  The Panel nevertheless acknowledges the difficulty of proving a negative and determines that Complainant has presented enough to shift the burden to Respondent to offer something beyond an unsubstantiated rebuttal.  Respondent has failed to do so, and indeed its evidence renders even more questionable its proposition that it has been “commonly known” by the Domain Name.

 

None of the evidence that Respondent presents sheds any light on whether consumers have come to know Respondent by the Domain Name or any component thereof (e.g., the second-level domain).  Contrary to Respondent’s assertion, Exhibits 5a-c do not document that Respondent “is and always has been commonly known by the name NETQWEST.COM.”  Exhibit 5a is simply an excerpt from a service agreement and establishes little more than Respondent’s efforts to begin offering Internet services.  The fact that the document refers to “Netqwest, Inc.” says nothing about how consumers or the public at large have come to know Respondent (if indeed they have at all).  The same is true of the two service invoices (Exhibit 5b) and the Resolution of the Board of Directors (Exhibit 5c).  None of these documents memorialize any contact between Respondent and any actual or potential customer, but merely with a handful of technical personnel and Respondent’s own officers.  In addition, all of the documents are at least five years old, so they do not establish any current knowledge of Respondent by the Domain Name.

 

Respondent fails to present any evidence of a customer base, let alone one that has come to associate Respondent with the disputed Domain Name.  Instead, Respondent argues that the successful delivery of electronic and hard copies of the Complaint itself “verifi[es]” that Respondent has always been known by the Domain Name.  The Panel observes that Ms. Thompson’s receipt of the email to wendy@netqwest.com simply confirms that Respondent currently controls the Domain Name at issue.  The United States Postal Service’s successful delivery of the hard copy likewise confirms nothing beyond the accuracy of the address.

 

While the Panel is troubled by Complainant’s long delay in bringing this UDRP action, it need not and does not reach the question whether a trademark owner’s delay could make it possible for an originally illegitimate use of a mark to establish rights pursuant to Paragraph 4(c)(ii) of the Policy through use over a sufficiently lengthy period of time.[1]  On the facts of this case, Respondent’s failure to present any relevant evidence that it has built up any recognition of its Domain Name in the minds of any members of the consuming public compels the conclusion that it has not commonly been known by the disputed Domain Name.

 

Registered and Used in Bad Faith

 

Complainant alleges that Respondent acted with bad faith pursuant to paragraphs 4(b)(ii), (iii), and (iv) of the Policy.  The allegation is deficient insofar as it concerns 4(b)(ii), for Complainant fails to assert that Respondent has engaged in a pattern of conduct that prevents legitimate owners of trademarks from reflecting the mark in corresponding Domain Names. 

 

The Panel concludes however that Respondent registered and used the Domain Name in bad faith because it sought to gain financially by exploiting Complainant’s mark and thus creating the false impression that Complainant was somehow connected with the site.  By the time Respondent registered the Domain Name, Complainant had already registered its QWEST mark. Respondent therefore, at the very least, had constructive knowledge of the mark’s existence.  Respondent asserts that it sought to create a name from the words INTERNET, QUEST, and MIDWEST.  In doing so, however, Respondent could have come up with any number of domain names less confusingly similar to Complainant’s (e.g <midnetquest>).  The Panel refuses to write off as a mere coincidence Respondent’s selection of a name that posed a significant risk of confusion with the mark of an established telecommunications company, particularly when its purpose in doing so was to provide services that overlap directly with Complainant’s.  The Panel concludes that Respondent likely had actual knowledge of Complainant’s mark at the time of registration.

 

Many Panels have inferred bad faith from a party’s registration of a Domain Name that it knew should have known to be confusingly similar to a strong mark with significant goodwill. See, e.g., Perot Sys. Corp. v. Perot.net, No. FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question was obviously connected with the Complainant’s marks and the respondent was thus creating a likelihood of confusion for commercial gain); Victoria’s Secret v. Hardin, No. FA 96694 (Nat. Arb. Forum Mar. 21, 2001) (inferring bad faith from the conclusion that the respondent had actual or constructive knowledge of the complainant’s marks at the time she registered the disputed domain name);  Digi Int’l v. DDI Sys., No. FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”);  British Sky Broad. Group v. Merino, No. D2004-0131 (“It is difficult to envisage that Respondents chose to register the disputed domain names by accident.”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (explaining that “one can infer an intent to confuse” when “an alleged infringer chooses a mark he knows to be similar to another.”).  Having determined that Respondent had constructive and likely actual knowledge of Complainant’s mark, the Panel concludes that Respondent registered the Domain Name in bad faith.  In generating confusion with Complainant’s mark and thus seeking to redirect Complainant’s customers, Respondent was attempting to gain financially at the expense of the goodwill Complainant has built up in its mark.

 

While the Panel notes the distinctions between the logos and the absence of any reference to Respondent in the web page to which the disputed Domain Name resolves, these factors appear largely irrelevant to inquiries under Paragraph 4(b)(iv).[2]  The operator of a website can commercially benefit even if misdirected Internet users realize they are in an unintended place immediately after the index page resolves. See, e.g., Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., No. D2000-0118 (WIPO Apr. 17, 2001).

 

There is no need for the Panel to reach Paragraph 4(b)(i) or consider whether there is additional evidence of Respondent’s bad faith.

 

Respondent’s Request For a Finding of Reverse Domain-Name Hijacking or Other Bad Faith

 

Since Complainant has established all three necessary elements, there is no basis to find  reverse domain-name hijacking as Respondent requests.

 

DECISION

The Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <netqwest.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Michael Albert, Panelist
Dated: July 28, 2004

 

 

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