Questar Corporation v. Marketing Total S.A.
Claim Number: FA0610000819504
Complainant is Questar Corporation (“Complainant”), represented by Jonathan W. Richards, of Workman Nydegger, 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111. Respondent is Marketing Total S.A. (“Respondent”), P.O. Box 556, Main Street, Charlestown, West Indies KN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <questargas.net>, registered with Belgiumdomains, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 16, 2006.
On October 18, 2006, Belgiumdomains, LLC confirmed by e-mail to the National Arbitration Forum that the <questargas.net> domain name is registered with Belgiumdomains, LLC and that Respondent is the current registrant of the name. Belgiumdomains, LLC has verified that Respondent is bound by the Belgiumdomains, LLC 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 18, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 7, 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@questargas.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <questargas.net> domain name is identical to Complainant’s QUESTAR GAS mark.
2. Respondent does not have any rights or legitimate interests in the <questargas.net> domain name.
3. Respondent registered and used the <questargas.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Questar Corporation, is in the gas and oil business, primarily serving residential, commercial, industrial and business markets in the Western United States. For over twenty years, Complainant has continuously used the QUESTAR GAS mark in connection with gas and oil exploration, development and production, gas gathering and processing, interstate gas transportation and storage, and retail gas distribution.
Complainant has registered the QUESTAR GAS mark with
the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,298,772
issued December 7, 1999). Complainant
also holds a trademark registration with the USPTO for the QUESTAR mark (Reg.
No. 1,962,725 issued March 19, 1996).
Respondent registered the <questargas.net> domain name on December 23, 2005. Respondent’s website at the disputed domain name features links such as “Lock in Your Gas Bill,” “Oil & Gas Producer,” “Control Your Energy Bills” and “Natural Gas.” Some of these links resolve to Complainant’s competitors in the oil and gas industry, while others resolve to third-party websites offering content unrelated to Complainant.
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. See 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); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 QUESTAR GAS mark through registration of the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world).
The <questargas.net> domain name contains Complainant’s entire registered QUESTAR GAS mark, eliminates the space between terms and adds the generic top-level domain “.net.” These alterations are insufficient to distinguish the disputed domain name from Complainant’s mark. Accordingly, the Panel finds the <questargas.net> domain name to be confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Motohisa Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
The Panel finds that Complainant has sufficiently satisfied Policy ¶ 4(a)(i).
Complainant maintains that Respondent does not have rights
to or legitimate interests in the disputed domain name. Complainant has the initial burden of proof
in establishing that Respondent has no rights or legitimate interests in the
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See AOL LLC v.
Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must
first make a prima facie showing that Respondent does not have rights or
legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then
the burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <questargas.net>
domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a response, the respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Because the WHOIS information lists the domain name
registrant as “Marketing Total S.A.,” and there is no other evidence in the
record suggesting that Respondent is commonly known by the disputed domain
name, the Panel finds that Respondent has not established rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c)(ii). See Great S. Wood Preserving, Inc. v.
TFA Assocs., FA 95169 (Nat. Arb.
Forum Aug. 5, 2000) (finding that the respondent was not commonly known by the
domain name <greatsouthernwood.com> where the respondent linked the
domain name to <bestoftheweb.com>); see also Instron
Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometer.com> domain names because the WHOIS information
listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the
registrant of the disputed domain name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
Moreover, Respondent is using the disputed domain name to maintain a web page displaying commercial links to various content, including Complainant’s competitors. In DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002), the panel determined that the respondent’s use of the <dlj.com> domain name to divert Internet users to the <visual.com> domain name, where services that competed with the complainant were advertised, was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Respondent’s website at the <questargas.net> domain name also has the potential to divert Internet users seeking information on Complainant to competing websites, and Respondent likely earns click-through fees for each Internet user it diverts to third-party websites. The Panel does not find such use to be a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co Ltd. v. Citipublications, FA 692150 (Nat. Arb. Forum Jul. 17, 2006) (finding that the respondent’s parking of a domain name containing the complainant’s mark for the respondent’s commercial gain did not satisfy Policy ¶ 4(c)(i) or ¶ 4(c)(iii)).
The Panel finds that Complainant has sufficiently satisfied Policy ¶ 4(a)(ii).
Because Respondent is using the <questargas.net>
domain name to redirect Internet users to competing websites, the Panel finds
that Respondent has registered and is using the disputed domain name in order
to disrupt Complainant’s business under the QUESTAR GAS mark, which constitutes
bad faith according to Policy ¶ 4(b)(iii).
See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb.
Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the
same business as the Complainant. The parties can therefore be considered as
competitors. The Panel thus finds that the Respondent registered the domain
name primarily for the purpose of disrupting the business of a competitor,
which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”);
see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
The Panel also finds
that Respondent’s diversionary use of the <questargas.net> domain
name for commercial gain violates Policy ¶ 4(b)(iv), for by linking the domain
name to a commercial links page and presumably earning click-through fees,
Respondent is taking advantage of the confusing similarity between the disputed
domain name and Complainant’s QUESTAR GAS mark in order to profit from the
goodwill associated with the mark. 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); see
also Toyota Motor Sales U.S.A. Inc. v.
Clelland, FA 198018 (Nat. Arb. Forum Nov.
10, 2003) (“Respondent used <land-cruiser.com> to advertise its business,
which sold goods in competition with Complainant. This establishes bad faith as
defined in Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant has sufficiently satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <questargas.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 21, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum