Best Fares USA, Inc. v. WebQuest.com Inc.
Claim Number: FA0602000639741
PARTIES
Complainant is Best Fares USA,
Inc. (“Complainant”), represented by Deborah
L. Lively, of Thompson & Knight, LLP, 1700
Pacific Ave., Suite 3300, Dallas, TX 75201.
Respondent is WebQuest.com Inc. (“Respondent”),
represented by David M. Dingeman, of Law Office of David M. Dingeman, 2907 Emerald Sound,
Cedar Hill, TX 75104.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quickfare.com>,
registered with Moniker Online Services,
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.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 7, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 9, 2006.
On February 8, 2006, Moniker Online Services, Inc. confirmed by e-mail
to the National Arbitration Forum that the <quickfare.com>
domain name is registered with Moniker Online Services, Inc. and that the
Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is
bound by the Moniker Online Services, 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 February 10, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 2, 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@quickfare.com by e-mail
A timely Response was received and determined to be complete on March
2, 2006.
On March 9, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends
that:
·
the Respondent
has no rights or legitimate interests in the <quickfare.com>
domain name due to the fact that:
-
it is merely
exploiting the potential affiliation of
such domain name with the Complainant, using such domain name in order to attract Internet users to its
website;
-
the disputed
domain name operates as a pay-per- click website, providing links to other
travel related website, which offer the same type of service as those provided
by the Complainant under quickfare;
-
the Respondent
has engaged in similar behavior in the past;
·
the Respondent
registered and has been using the disputed domain name in bad faith as it has
intentionally attempted to attract, for commercial gain, Internet users to its
site by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
The
Respondent alleges that:
·
the
information contained in the Complaint is not complete and accurate, as the
first use of the mark, QUICKFARE, in commerce is from November 2001 and not
from January 2001;
·
the
mark QUICKFARE is a generic mark which did not acquire secondary meaning;
·
Respondent
has legitimate common-law rights for the generic phrase
<quickfare.com>
for providing search engine results for customized Internet
searching
of quick airline fares since at least as early as May 12, 2003;
BestFares’
elaborate and complex tool, “quick fare finder” is not identical nor
confusingly similar to Respondent’s quick air fare search engine and website at
<quickfare.com>;
·
conducting
a search on Google for “quick fare,” for sites with both words
only,
gives over 16 million results, while conducting a search for “quickfare” over
26,100 sites are returned.
·
it has rights or legitimate interests in respect of
the dispute domain name which is an English phrase available on a
first-come first-serve basis in which no party could have exclusive rights or a
U.S.trademark registration.
·
it
operated <quickfare.com> for thirty (30) months as a pay-per-click
search
engine for quick airline fares without dispute, notice nor constructive
notice from Complainant and it never heard of the Complainant nor their service marks prior to receiving a cease and desist letter on January 19, 2006 and has not exploited Respondent’s offering of goods or services nor does any evidence suggest this.
·
it
is using a generic phrase in <quickfare.com> to profit from the
intrinsic
generic value of the word without the intent to take advantage of
Complainant’s
alleged rights in those words.
·
Complainant’s
mark is not famous nor exclusive and is generic at best without
Complainant
providing evidence of secondary meaning.
·
it did not register <quickfare.com> in bad
faith and is not using
<quickfare.com> in bad
faith as:
- it never diverted customers from
Complainant nor is there any evidence and there are no circumstances indicating
that Respondent registered or acquired the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration
to Complainant.
- it did not register the <quickfare.com>
in order to prevent the owner of the trademark from reflecting the mark in a
corresponding domain name.
- it has not registered the domain name
primarily for the purpose of
disrupting the business of a competitor;
Respondent is not in the business of
travel agent services as its website is clearly a search engine. Complainant’s website clearly sells travel
related services along with extensive newsletters.
FINDINGS
Complainant is the owner of two service marks
QUICKFARE, one of them registered and the other one pending registration with
USPTO. The Complainant holds a search
engine “QUICKFARE Finder” by which it provides lowest possible travel fares for
consumers.
Respondent is using <quickfare.com> for
providing search engine results for customized Internet searching of quick airline fares.
The Panel is of the opinion the main issue to
be considered in this case is the distinctiveness of the service mark QUICKFARE
which would confer exclusive rights to Complainant in using the said mark in
the field of finding and disseminating information about transportation
bargains and assisting customers with making reservation and bookings. Such distinctiveness shall result from the
secondary meaning associated to the mark.
The Panel finds that the service mark
QUICKFARE has acquired secondary meaning in connection with the services
offered by Complainant.
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.
The Panel considers that
Complainant has established rights in the quickfare
mark through 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.”). The generic or non-generic
character of a trademark does not preclude the Complainant to assert legitimate
rights in a registered trademark.
The domain name incorporates Complainant’s
mark in its entirety. This makes
it identical to Complainant’s QUICKFARE
mark. The mere addition of the generic
top-level domain “com” represents
a minor alteration to
Complainant’s registered mark, insufficient to negate the identical aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Shirmax Retail Ltd. v. CES Mktg Group Inc., AF-0104 (eResolution Mar. 20, 2000)
(refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than
disjunctive sense in holding that “mere identicality of a domain name with a
registered trademark is sufficient to meet the first element [of the Policy],
even if there is no likelihood of confusion whatsoever”); see also Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum
Dec. 6, 2003) (“It has been established that the addition of a generic
top-level domain is irrelevant when considering whether a domain name is
identical or confusingly similar under the Policy.”); see also Daedong-USA,
Inc. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name,
<kioti.com>, is identical to Complainant's KIOTI mark because adding a
top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Respondent asserts that it has rights and
legitimate interests in the disputed domain name mainly because it is an
“English phrase” available on a first-come first-serve basis in which no party
could have exclusive rights or a U.S. trademark registration.
Respondent invokes the generic character of
the two terms which combined represents Complainant’s service mark. The Panel finds that Complainant’s service
mark is a descriptive mark, which refers to the qualities or characteristics of
a certain service. See Tall
Oaks Publ’g, Inc. vs. Nat’l
Trade Publ’ns, Inc., FA 94346 (Nat. Arb. Forum May 5,
2000) (A "generic" term is one that
refers, or has come to be understood as referring, to the genus of which the
particular product is a species. …By contrast, a descriptive mark forthwith
conveys an immediate idea of the ingredients, qualities or characteristics of
the goods. Descriptive marks, although
not inherently entitled to trademark protection, are afforded such protection
upon a showing that such marks have acquired distinctiveness (secondary
meaning) through use in the marketplace.).
In the light of the evidences submitted by both parties, the Panel
considers that the Complainant’s QUICKFARE mark is a distinctive service mark.
Firstly, the mark is a distinctive service mark because it is
registered with 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.”).
Secondly, the mark is a distinctive service mark due
to the Complainant use of the
QUICKFARE mark for the operation of the search engine QUICKFARE finder, which
as it resulted from the evidence submitted by Respondent and from the Panel’s
own search, it is known and referred to on different third-party websites.
Respondent also contends that its actual use of the
disputed domain name is a fair use. The
Panel finds as other Panels before it, that the commercial use of domain names that are identical
to another’s mark cannot constitute a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
UGG Holdings, Inc v. WebQuest.com, Inc., FA 335456 (Nat. Arb. Forum Dec. 8, 2004); 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).
Registration and Use in Bad Faith
It is known that a
US federal trademark registration has the benefit of constructive notice
nationwide of the trademark owner's claim.
The Respondent is a legal person with headquarters on US territory. Therefore, the Panel cannot accept Respondent’s statement that it
registered the disputed domain name without knowledge of Complainant’s mark.
The Panel accepts from Respondent’s use of the disputed domain name that such registration and use are in bad faith as it has intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant’s mark. In addition, the fact that Respondent has engaged in similar to this case behavior in the past represents further indication of bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <quickfare.com>
domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka , Panelist
Dated: March 22, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum
