Questar Corporation v. LaPorte Holdings, Inc. c/o Admin
Claim Number: FA0510000573940
Complainant is Questar Corporation (“Complainant”), represented by Ryan D. Benson of Workman Nydegger, 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111. Respondent is LaPorte Holdings c/o Admin (“Respondent”), 5482 Wilshire Blvd #1928, Los Angeles, CA 90036.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <queststargas.com> and <qwestargas.com>, registered with Nameking.com, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 11, 2005.
On October 7, 2005, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <queststargas.com> and <qwestargas.com> domain names are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 October 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 9, 2005 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@queststargas.com and postmaster@qwestargas.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <queststargas.com> and <qwestargas.com> domain names are confusingly similar to Complainant’s QUESTAR GAS mark.
2. Respondent does not have any rights or legitimate interests in the <queststargas.com> and <qwestargas.com> domain names.
3. Respondent registered and used the <queststargas.com> and <qwestargas.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Questar Corporation, is engaged in gas and oil
exploration, development and production, gas gathering and processing,
interstate gas transportation and storage and retail gas distribution. Complainant serves residential, commercial,
industrial and business markets in the western United States.
Complainant owns registrations with the United States Patent
and Trademark Office (“USPTO”) for the QUESTAR (i.e., Reg. No. 2,300,599
isssued December 14, 1999) and QUESTAR GAS (i.e., Reg. No. 2,298,772 issued
December 7, 1999) marks. Complainant
has been using its QUESTAR mark for over twenty years and has used its QUESTAR
GAS mark for the past eight years in the United States. As result of its substantial investments in
the marks, Complainant’s marks have built up considerable goodwill.
Respondent registered the <queststargas.com> domain name on November 18, 2003 and the <qwestargas.com> domain name on November 9, 2004. Respondent is using the <queststargas.com> domain name to operate a search engine website that displays numerous links to third-party websites. Respondent presumably earns referral fees for diverting Internet users to these third-party websites via the disputed domain name. Respondent has made no use of the <qwestargas.com> domain name.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true).
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 provided evidence of its registration of the
QUESTAR GAS mark with the USPTO, which the Panel determines to be sufficient to
establish Complainant’s rights in the mark for purposes of Policy ¶
4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”).
The <queststargas.com> domain name incorporates Complainant’s QUESTAR GAS mark in its entirety and differs only with the addition of the letters “st.” Furthermore, the <qwestargas.com> domain name varies from Complainant’s mark only with the substitution of the letter “w” for the letter “u” in the mark. Even with these changes, the domain names remain phonetically identical to Complainant’s mark. Thus, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark. See Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”).
Additionally, the Panel notes that the use of the generic top-level domain “.com” in the domain names is irrelevant to the Policy ¶ 4(a)(i) analysis. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant contends that Respondent is not a licensee of Complainant or authorized to use Complainant’s QUESTAR GAS mark or any of Complainant’s other marks. Furthermore, nothing in the record, including the WHOIS information, suggests that Respondent is commonly known by the <queststargas.com> and <qwestargas.com> domain names. Thus, the Panel finds that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Complainant has provided proof that the <queststargas.com> domain name is being used to operate a generic search engine website that displays links to numerous third-party websites, presumably for the purpose of accumulating click-through fees for diverting Internet users to these websites. The Panel does not consider it a bona fide offering of goods or services under Policy ¶ 4(c)(i) to use a confusingly similar version of Complainant’s QUESTAR GAS mark to attract Internet users to Respondent’s commercial website for profit. This commercial use of a confusingly similar domain name to benefit from the goodwill associated with the mark also cannot be construed as a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Thus, the Panel concludes that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the 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).
Additionally, Complainant asserts that Respondent has not made any use of the <qwestargas.com> domain name since registering the domain name on November 9, 2004. Respondent’s failure to make any use of the disputed domain name or to offer evidence of preparations to use the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) does not establish rights in the domain name. Furthermore, such nonuse of a domain name confusingly similar to Complainant’s mark for nearly one year does not constitute a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <queststargas.com> domain name to attract Internet users to its directory website for the purpose of earning referral fees demonstrates Respondent’s intent to create a likelihood of confusion as to Complainant’s affiliation with Respondent’s website. The registration and use of a domain name confusingly similar to Complainant’s QUESTAR GAS mark to benefit from the goodwill associated with Complainant’s mark is evidence of bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Respondent has not used the <qwestargas.com> domain name in nearly a year and has not provided any evidence that would suggest that it is holding the disputed domain name for any non-infringing purpose. Without any indication that Respondent registered the domain name with the intention of using it for a legitimate purpose, the Panel concludes that Respondent’s passive holding of the domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
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 <queststargas.com> and <qwestargas.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 28, 2005
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