Quantum Loyalty Systems, Inc. v. Quantum
Loyalty Systems, Inc.
Claim Number: FA0610000810228
PARTIES
Complainant is Quantum Loyalty Systems, Inc. (“Complainant”), represented by Lawrence J. Siskind, of Harvey Siskind LLP, Four Embarcadero Center, 39th Floor, San Francisco, CA 94111. Respondent is Quantum Loyalty Systems, Inc. (“Respondent”), represented by Lawrence J. Siskind, of Harvey Siskind LLP Four Embarcadero Center, 39th Floor, San Francisco, CA 415-354-0110.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quantumrewards.com>,
registered with Nameview, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 29, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 2, 2006.
On October 6, 2006, Nameview, Inc. confirmed by e-mail to the National
Arbitration Forum that the <quantumrewards.com>
domain name is registered with Nameview, Inc. and that the Respondent is the
current registrant of the name. Nameview,
Inc. has verified that Respondent is bound by the Nameview, 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 16, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 6, 2006 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@quantumrewards.com by e-mail.
A timely Response was received and determined to be complete on
November 3, 2006.
On November 8, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant offers fully customizable reward currency for increased
customer loyalty and sales incentives.
Complainant uses certain marks to forward its customer loyalty
programs. These include QUANTUM LOYALTY
SYSTEMS, QUANTUM REWARDS and QUANTUM REWARDSCARD. These marks were registered in 2001. In 2005, Respondent registered <quantumrewards.com> which
is a domain name that is identical and confusingly similar to the Complainant’s
marks and domain names, and which promotes identical loyalty and rewards
programs, including those offered by Complainant’s business partners and
competitors. Its adoption is a clear
effort at “cyber-squatting,” i.e., purchasing a domain name that is a
variation on a popular trademark with the expectation that the site will divert
traffic from the original site through the use of that mark in the domain
name. Respondent reserved the domain
name <quantumrewards.com> on May 31, 2005. Respondent has no legitimate rights in the
domain name. Further, Respondent was
likely aware of Complainant’s rights in the QUANTUM marks and domain names when
it reserved the domain name. Respondent
itself does not offer any goods or services. Instead, It offers links to many
services competitive with Complainant.
Following Complainant’s filing of its Complaint, Nameview, the
Registrar of the disputed domain name, caused to be changed or acted in concert
with the party that caused to be changed the WHOIS records for the disputed
domain name to reflect the Complainant as the Registrant. Although the Complainant and Respondent are
both nominally the same entity, Quantum Loyalty Systems, Inc. is the Respondent
only by name and does not have access to or control of the disputed domain
name.
B. Respondent
Complainant initially filed its Complainant against Domain
Administrator c/o Nameview, Inc. Based
upon the WHOIS records, Complainant was required to amend its Complaint to show
itself as Respondent in the case, so that both Complainant and Respondent are
the same party. Respondent concurs with
all allegations contained in its Complaint.
FINDINGS
1.
Since Complainant and Respondent are the same party, and both request
the transfer of the domain name <quantumrewards.com> Complainant,
the Panel has no choice but to order the transfer.
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.
Because of the unusual circumstances of this
case, it is not necessary to make the typical analysis of the three issues
stated above, to reach the correct disposition of the case.
Complainant filed its Complainant against a
Respondent who had registered the disputed domain name on May 31, 2005. That Respondent, according to Complainant,
offered no goods or services. Instead,
it offered links to many services competitive with Complainant. Complainant filed its domain name dispute
first against Domain Administrator c/o Nameview, Inc. Following Complainant’s filing of its Complaint, Nameview, the
Registrar of the disputed domain name, caused to be changed the WHOIS records
for the disputed domain name to show Complainant as owner of the disputed
domain name. This required Complainant
to file the Response as the Respondent.
This was required because Complainant, even though shown as owner of the
disputed domain name, has no access to or control of the disputed domain name and thus must proceed this case to
conclusion.
The unique result of this process is that
Quantum Loyalty Systems, Inc. is both Complainant and Respondent. Both Complainant and Respondent request that
the domain name <quantumrewards.com> be transferred to
Complainant.
Previous panels have found that where a
Respondent agrees to the transfer of a disputed domain name, the disputed
domain name may be transferred immediately, and that a full analysis of the
Policy is unnecessary. See Boehringer Ingelheim Int’l GmbH v. Modern
Ltd-Cayman Web Dev, FA133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring
the domain name registration where the respondent stipulated to the transfer); see
also Malev Hungarian Airlines, Ltd. v. Vertical Axis, Inc., FA212653 (Nat.
Arb. Forum Jan. 13, 2004) (stating that, “In this case, the parties have both
asked for the domain name to be transferred to the Complainant…Since the
requests of the parties in this case are identical, the Panel has no scope to
do anything other than to recognize the common request and it has no mandate to
make findings of fact or of compliance (or not) with the Policy.”); see also
Disney Enters, Inc. v. Morales, FA475191 (Nat. Arb. Forum June 24, 2005)
(“[U]nder such circumstances, where Respondent has agreed to comply with
Complainant’s request, the Panel felt it to be expedient and judicial to forego
the traditional UDRP analysis and order the transfer of the domain names.”).
The inference is made that the original
Registrant, and the party against whom Complainant sought to file against as
Respondent, changed the registration information to list Complainant as the
owner of the <quantumrewards.com> domain name. This amounts to an agreement to transfer the
disputed domain name to Complainant. See
Norgren, Inc. v. Norgen, Inc., c/o Domain Adm’r, FA670051 (Nat. Arb. Forum
May 23, 2006) (granting transfer under similar circumstances).
DECISION
Having established a proper case for transfer as required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <quantumrewards.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 21, 2006
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