Fred Meyer Stores, Inc. v.
Claim Number: FA0704000954075
PARTIES
Complainant is Fred Meyer Stores, Inc. (“Complainant”), represented by James
Geringer, of Klarquist Sparkman, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qfc.com>, registered with Spot Domain
LLC.
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.
Timothy D. O’Leary, Sally Abel and Diane
Cabell.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 4, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 6, 2007.
On April 12, 2007, Spot Domain LLC confirmed by e-mail to the
National Arbitration Forum that the <qfc.com> domain name is registered
with Spot Domain LLC and that Respondent
is the current registrant of the name. Spot Domain LLC has verified that Respondent is
bound by the Spot Domain 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 April 17, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 7, 2007 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@qfc.com by e-mail.
On May 4, 2007, Respondent requested an extension for the deadline for
which to file a Response. On May 4,
2007, the National Arbitration Forum granted the request, extending the due
date for the Response to May 21, 2007.
A timely Response was received and determined to be complete on May 17, 2007.
Complainant’s Additional Statement was filed on May 22, 2007.
Respondent’s Additional Reply was filed on May 29, 2007.
On May 30, 2007, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Timothy D. O’Leary, Sally Abel and Diane Cabell as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
COMPLAINANT’S CONTENTION NO. 1
A. IDENTICAL OR CONFUSINGLY SIMILAR ISSUE: POLICY ¶ 4(a)(i)
Complainant asserts that ownership of the trademark and tradename QFC®
cannot be disputed. The mark QFC has
enjoyed the protection of federal trademark registration for over 14
years. See Trademark Registration Nos. 1,747,588, 2,301,350, and
2,733,050. Complainant’s
Complainant contends that the domain name at
issue is identical to and therefore confusingly similar to Complainant’s
registered trademark, “QFC.” The only
difference between the domain name at issue (<qfc.com>) and the
registered mark (QFC®) is the addition of the generic top-level domain
extension “.com.” Complainant points out
that it has been repeatedly decided by this forum as well as others that the
addition of a gTLD extension is not significant enough to avoid confusion where
the mark and the domain are otherwise identical.
Complainant contends that because the domain
at issue is identical to Complainant’s QFC® mark, Internet users are likely to
confuse Respondent’s website as being affiliated with or endorsed by
Complainant. [ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).]
Complainant advises the Panel that until
earlier this month the disputed domain was registered to the recidivist cybersquatter
Andy Tran (alias SmartBuy). When
Complainant contacted Tran to attempt to resolve this matter, Tran transferred
the disputed domain name to
Complainant maintains that on information
and belief, the currently listed registrant is either an alias for or under the
control of Andy Tran, a/k/a SmartBuy. Complainant
advises that Tran has previously attempted to thwart UDRP proceedings by
changing registration information just prior to commencement of
proceedings. See, e.g., Asset Mktg.
Sys., LLC v. SmartBuy Corp., Andy Tran, et al., D2004-0492 (WIPO Sept. 17,
2004) (ordering transfer of three domains following transfer of registration by
SmartBuy of each domain to a different registrant prior to initiation of
arbitration proceedings, and further finding that all parties were related and
at least under common control).
Furthermore, Complainant notes that the street address information given
for Tran and the “new” registrant are within a short distance of each other
(less than 2 ½ miles), further suggesting that they are related.
RESPONSE OF RESPONDENT TO CONTENTION NO. 1
Respondent states that Complainant does not
have a registered mark identical to the Disputed Domain as it does not have a
mark for the letters QFC standing alone.
The image identified in the Complaint, which appears as follows, QFC, is
not a registered mark. To the contrary,
it is simply a trademark application filed on a 1B basis, meaning that
Complainant has an “intent to use” the mark in commerce. Since this mark is not registered and is not
currently being used, it provides no enforceable rights in this proceeding. Nor, Respondent states, does Complainant have
a trademark confusingly similar to the Disputed Domain. Respondent identified three registered
trademarks in the Complaint. Each of
these registrations is a design plus word mark and not “a word mark alone.” These marks are easily distinguished from the
simple 3-letter combination “qfc,” which is incorporated in the Disputed
Domain.
Respondent argues that both the design
elements in Complainant’s two design-plus-word marks, and the extra wording in
its word mark, are sufficient to distinguish the marks from the Disputed Domain
which incorporates only the 3-letter combination QFC. Respondent contends that there is no basis
for transferring the domain name <qfc.com> (the
“Disputed Domain”) to Complainant.
Respondent states it must be emphasized that
Complainant is completely incorrect that Respondent and the previous registrant
Andy Tran, d/b/a SmartBuy (“Tran”) are associated in any manner. Respondent is not an alias or under the
control of Tran. The fact that the
street addresses are within 2 ½ miles is simply a coincidence.
Respondent states that it lawfully purchased the Disputed Domain for $13,000.00 in
July 2006 from the prior registrant to use for an online loan site known as
Respondent asserts he did not purchase the
Disputed Domain to prevent Complainant from owning a domain name incorporating
its alleged trademark. Respondent contends
he had no knowledge of Complainant or its mark when it registered the Disputed
Domain.
Respondent asserts that the Disputed Domain
is composed solely of the common 3-letter combination QFC. An advanced Google search for “QFC” excluding
“quality food center” and “supermarket”, “grocery;” “pharmacy,” “coupons,” and <qfconline.com>
to avoid pages referencing Complainant, yielded 437,000 web pages containing
the common 3-letter combination.
Respondent maintains he has rights and a
legitimate interest in the Disputed Domain because it incorporates the simple
3-letter combination QFC; because Respondent is known as
COMPLAINANT’S
ADDITIONAL STATEMENT UNDER CONTENTION NO. 1
Complainant states
that Respondent’s submission rests on the fiction that Phong Ngo is a bona
fide purchaser without notice who should not be tarred with the bad faith
actions of the former registrant, recidivist cybersquatters Andy Tran and SmartBuy. (Response: “At the outset, it must be
emphasized that Complainant is completely incorrect that respondent and the
previous registrant Andy Tran, d/b/a SmartBuy (‘Tran”) are associated in any
manner.”) Based on that fiction,
Respondent argues that it has long intended to build a legitimate website at <qfc.com>, and that it had
no knowledge of QFC or the fact that the website was being used to steer
consumers to links ostensibly advertising QFC competitors.
“The truth,” Complainant
asserts, “is that Phong Ngo, also known as Mike Ngo, has been the President
of SmartBuy,” as made clear in the excerpt of a search report from the
Accurint® database operated by LexisNexis.
The fact that Ngo
has been an officer in the very company that he alleges sold him the domain,
and that he even registered “SmartBuy” as a fictitious business name,
demonstrates that Phong (Mike) Ngo has misrepresented his connection with the
former registrant to this Panel, and is anything but a bona fide
purchaser without notice.
Moreover,
Complainant argues Respondent has offered no evidence that it has ever been
known as “Quality Financial Center,” and the address given for the company at
the website Respondent put up at <qfc.com> after this Complaint was filed (“333 City Blvd, 17th Floor, Orange CA
92868”) also appears to be a fiction, because a physical visit to that building
(an office tower in suburban Los Angeles) revealed that there is no “Quality
Financial Center” listed in the lobby or on that floor.
Respondent’s
argument that <qfc.com> is not likely to be confused with the QFC
tradename, “QFC” mark at common law, or the registered “QFC” marks, is belied
by Respondent’s own use of the <qfc.com> domain to link to competitors’ websites.
There is no
coincidence Complainant argues, in the fact that Respondent’s website sought to
redirect traffic to <qfc.com> to websites purporting to be connected to Safeway
and Albertsons, among other sites.
RESPONDENT’S REPLY TO
COMPLAINANT’S ADDITIONAL STATEMENT UNDER CONTENTION NO. 1
While Respondent had been associated with Mr. Tran and SmartBuy in the
past, he has not been since June 2004 and, thus was not associated at the time
he purchased the domain name.
Respondent’s counsel maintains that he was not aware of this past
association when the Response was filed, and Respondent did not believe it was
relevant to disclose this fact to his counsel at the time. This is why that prior association was not
disclosed in the Response.
Respondent contends that the association between Respondent and Mr.
Tran terminated in June 2004 over strong business and personal
disagreements. Respondent learned in
June 2004 that Mr. Tran had filed a separate fictitious business name
certificate for SmartBuy.com in 2002 in his own name, which excluded
Respondent. Respondent also learned he
was not named or included as a signatory in a second SmartBuy business bank
account Mr. Tran opened. For these
reasons, Respondent believed he could no longer trust Mr. Tran and felt that he
was being cut out of the business. For
this reason, Respondent disassociated himself from Mr. Tran and SmartBuy in
June 2004.
Respondent maintains that he and his partner sought to register the
3-letter domain name that corresponded to the abbreviation for
Respondent states that
COMPLAINANT’S CONTENTION NO.
2
B. RIGHTS OR LEGITIMATE INTERESTS: Policy ¶ 4(a)(ii)
Complainant contends that Respondent does not have any rights or
legitimate interests in the domain at issue because Respondent has not used the
domain in connection with a bona fide offering of goods or services, is
not commonly known by the domain, and is simply trying to intentionally and
misleadingly divert consumers expecting to find Complainant to its site. Tran (SmartBuy) transferred the domain at
issue to “
Complainant states that presently <qfc.com> directs to a parking page
that contains only the text “Welcome to the future home of
Next Complainant asserts that Respondent
has not been known as <qfc.com>. The California Secretary of State has no
record of a “
RESPONDENT’S RESPONSE TO
CONTENTION NO. 2
Respondent contends Respondent has rights and legitimate interests in
the domain name.
Respondent states that “QFC” is simply a 3-letter combination to which
Complainant does not have exclusive rights. A Google search for “QFC” excluding “quality
food center” and “supermarket,” “grocery;” “pharmacy,” “coupons,” and <qfconline.com>
to avoid pages referencing Complainant, yielded 437,000 web pages containing
the common 3-letter combination, many of which are wholly unrelated to
Complainant. This substantial third-party
use, Respondent contends, is evidence that Complainant does not have exclusive
rights to the term QFC and, thus, supports Respondent’s legitimate interest in
the Disputed Domain. The fact that QFC
is subject to substantial third-party use on the Internet, in and of itself,
establishes Respondent’s legitimate interest in the Disputed Domain.
Moreover, in August 2006, before notice of this dispute, Respondent
purchased the Disputed Domain for $13,000 to use for an expansion of its
mortgage brokerage business. This is supported by the fact that Respondent has
been in the mortgage business, operating Oceanside Mortgage Corporation for 13
years prior to purchasing the Disputed Domain.
It is well established that use of a domain name, and the intent to use
a domain name, for a business constitutes use in connection with a bona fide offering of goods or services,
pursuant to Paragraph 4(c)(i) of the UDRP Policy, which is identical to
Paragraph 4(c)(ii) of the Policy. Here,
the Respondent has already begun operation of the QFC online loans business at <qfc.com>. Accordingly, for the above reasons,
Respondent has demonstrated it has rights and legitimate interest in the
Dispute Domain and the Complaint should, therefore, be denied.
COMPLAINANT’S ADDITIONAL
STATEMENT UNDER CONTENTION NO. 2
Respondent Ngo’s role in SmartBuy undermines his claim that he was
unaware of how the site was being used before SmartBuy was contacted by Fred
Meyer in March of this year. Even if
Ngo’s own allegations are believed, however, they make clear that he owned the
website for months while it was being used to make money by steering traffic to
QFC competitors. Moreover, Respondent
has offered no evidence that it has ever been known as “Quality Financial
Center,” and the address given for the company at the website Respondent put up
at <qfc.com>
after this Complaint was filed (“333 City Blvd, 17th Floor, Orange CA 92868”)
also appears to be a fiction, because a physical visit to that building (an
office tower in suburban Los Angeles) revealed that there is no “Quality
Financial Center” listed in the lobby or on that floor.
Accordingly, Respondent is not presently making, nor has previously
made, a legitimate, noncommercial or fair use of the disputed domain name.
RESPONDENT’S ADDITIONAL
SUBMISSION UNDER CONTENTION NO. 2
Respondent asserts it is not now associated with Andy Tran or SmartBuy
and was not so associated at the time he acquired the Disputed Domain. (Affidavit of Phong Ngo.) While Respondent had been associated with Mr.
Tran and SmartBuy in the past, he has not been since June 2004 and, thus was
not associated at the time he purchased the domain name. Respondent’s counsel was not aware of this
past association when the Response was filed, and Respondent did not believe it
was relevant to disclose this fact to his counsel at the time. This is why that prior association was not
disclosed in the Response.
Because they really wanted this domain name, Respondent swallowed his
pride and contacted Mr. Tran about purchasing it. Mr. Tran agreed to sell it for $13,000. As noted in the Response, Respondent had no
input or control over how Andy Tran was using the Disputed Domain prior to
Respondent being in control of the DNS.
Their prior association does not change that fact.
COMPLAINANT’S
CONTENTION NO. 3
C. REGISTRATION AND USE IN BAD FAITH
Complainant maintains that Respondent has
registered and is using the domain name <qfc.com> in bad faith, as
demonstrated by Respondent’s adoption of Complainant’s trademark as the
entirety of the domain at issue, by the response to Complainant’s initial cease
and desist letter (i.e., quickly transferring registration to what appears to
be an alias or alter ego), and by misdirecting visitors to <qfc.com> to
Complainant’s competitors, such as Safeway.
Complainant further alleges that prior to Complainant sending a cease
and desist letter to Tran on March 6, 2007, the domain at issue was directed to
a page containing links to Complainant’s competitors. When Complainant contacted Tran by letter on
March 6, 2007 to address its concerns, Tran responded by re-registering the
domain using an alias, or alter ego, in a transparent attempt to fabricate an
argument of legitimate use after the fact.
These actions, coupled with Complainant’s registration and usage of the
QFC mark over the past 13 years, demonstrates both actual and constructive
knowledge of Complainant’s rights by Respondent prior to the registration, much
less purported recent transfer, of the domain.
Complainant contends that “The registration and use of a domain name
confusingly similar to a trademark despite actual or constructive knowledge of
the mark holder’s rights is itself evidence of bad faith registration and use.”
Complainant argues that the Panel may also infer that Respondent is
affiliated with Tran and has previously made a profit from this usage of the
domain. Dell Inc. v. Superpennysaver, FA 676443
(Nat. Arb. Forum May 24, 2006) (“Respondent is using the [disputed]
domain names to redirect Internet users to Respondent’s commercial websites
that feature links to competing third-party websites. This use constitutes disruption and is evidence
of bad faith registration and use under Policy ¶ 4(b)(iii).”);
Miss Selfridge Retail Ltd. v. Miss
Selfridge Retail Ltd, FA 612497 (Nat. Arb. Forum Feb. 14, 2006)
(“Respondent is using the [disputed] domain name to operate a directory website
that offers links to numerous clothing retailers, and the Panel infers that
Respondent receives referral fees from third-party businesses for linking
Internet users to their websites via the disputed domain name.). See
also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17,
2003) (“The Panel may infer that Respondent is making a profit from the
Internet traffic that is diverted to Respondent’s website.”). Use of a confusingly similar domain to
attract Internet traffic for commercial gain constitutes bad faith under the
Policy.
RESPONDENT’S
RESPONSE TO CONTENTION NO. 3
The third element that Complainant must show
is Respondent’s bad faith registration and use.
The Complaint fails on this count as well. The Policy identifies four circumstances that
may constitute evidence of bad faith registration and use:
(i)
circumstances indicating that you have registered or you have acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the owner
of the trademark or service mark or to a competitor of that complainant, for
valuable consideration in excess of your documented out-of-pocket costs
directly related to the domain name; or
(ii)
you have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii)
you have registered the domain name primarily for the
purpose of disrupting the business of a competitor; or
(iv)
by using the domain name, you have intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with the complainant's mark as to the
source, sponsorship, affiliation, or endorsement of your web site or location
or of a product or service on your web site or location.
Respondent maintains there is absolutely no evidence that Respondent
registered the Disputed Domain to sell to Complainant. Nor is there any evidence that Respondent had
even heard of Complainant or its purported trademark when it registered
the Disputed Domain – the undisputed evidence being to the contrary. Absent evidence of such knowledge on the part
of Respondent, bad faith cannot be proven.
Respondent asserts there was no basis for Respondent to have knowledge
of Complainant’s mark. Complainant does
not operate in the State of
Respondent contends that absent direct proof that a common term domain
name was registered or acquired solely for the purpose of profiting from
Complainant’s trademark rights, there can be no finding of bad faith
registration and use.
Here, Respondent argues, the undeniable fact is that “QFC” is a common
3-letter combination, appearing on numerous third-party web pages unrelated to
Complainant as acronyms for things other than Complainant’s business. This extensive third-party use is evidence
that Complainant does not enjoy exclusive use of the Disputed Domain, thus it
cannot be concluded that Respondent selected the Disputed Domain with
Complainant in mind.
Complainant suggests that the transfer of the Domain Name to Respondent
was a charade intended to evade application of the Policy. However, the evidence is that Respondent and
the prior registrant of the Disputed Domain, Andy Tran, are unrelated parties. Respondent was involved in the home loan business
in its Oceanside Mortgage business for 13 years prior to purchasing the
Disputed Domain and wanted to expand its loan business. Respondent, thus, had a bona fide reason to use QFC for a business called
Nor can the links that appeared on the <qfc.com> site prior to
transfer of the Disputed Domain establish bad faith on the part of
Respondent. Respondent did not control
the Disputed Domain when the links were present because the DNS for the domain
was still set to the servers controlled by Mr. Tran.
COMPLAINANT’S ADDITIONAL
SUBMISSION UNDER CONTENTION NO. 3
Complainant states that since Ngo has feigned having no association
with SmartBuy, the Response does not purport to dispute SmartBuy’s bad faith in
registering and using the <qfc.com> domain. Neither is it disputed that SmartBuy
transferred the domain in dispute only after it received Complainant’s
objection letter. Indeed, Ngo’s own
declaration admits to personal knowledge of this fact.
Neither, in light of the evidence noted above, can Respondent credibly
dispute that he is, in fact, associated with SmartBuy and Andy Tran. The very fact that Respondent sought to hide
that association from this Panel – and flatly, falsely denied it in his Response
– is strong evidence of bad faith. This
case simply presents another attempt by SmartBuy and its associates to
“launder” domain names by transferring them after receiving an objection – a
tactic that failed in Asset Marketing
Systems, LLC v. SmartBuy Corporation, Andy Tran, et al., D2004-0492
(WIPO Sept. 17, 2004), and that should
fail again here. It also bears note that
here, like in Asset Marketing,
Respondent has further confirmed his bad faith by using false address
information in connection with the domain, including not only the fictional
“333 City Blvd” address noted above, but at least partially false information
in the WHOIS, as well, where Ngo has claimed that his business occupies “Suite
300” in a building in Orange, California where no “suite” exists.
Complainant contends that Respondent’s own submission is his
undoing. By confirming that he is none
other than Mike Ngo, he confirmed that he is absolutely “associated” with the
former registrant of record, SmartBuy. Complainant
argues that Respondent’s unconditional, but false, denial of any such
association is perhaps the clearest evidence one can have that this confusingly
similar domain was registered in bad faith for no legitimate purpose.
RESPONDENT’S ADDITIONAL
SUBMISSION UNDER CONTENTION NO. 3
Respondent advises that it is not now associated with Andy Tran or
SmartBuy and was not so associated at the time he acquired the Disputed
Domain. While Respondent had been
associated with Mr. Tran and SmartBuy in the past, he has not been since June
2004 and, thus was not associated at the time he purchased the domain
name. Respondent’s counsel advises he was
not aware of this past association when the Response was filed, and Respondent
did not believe it was relevant to disclose this fact to his counsel at the
time. This is the reason given for not
disclosing prior association.
Because they really wanted this domain name, Respondent indicates he swallowed
his pride and contacted Mr. Tran about purchasing it. Mr. Tran agreed to sell it for $13,000. Respondent contends that he had no input or
control over how Andy Tran was using the Disputed Domain prior to Respondent
being in control of the DNS. Their prior
association does not change that fact.
Respondent states the reason that
FINDINGS
Identical
or Confusingly Similar: Policy
¶ 4(a)(i)
The Panel finds the issues on this element in
favor of Complainant.
Complainant owns rights in three service marks registered with the
United States Patent and Trademark Office (“USPTO”): QFC (and design) (Reg. No.
1,747,588 issued January 19, 1993; QFC QUALITY FOOD CENTERS (and design) (Reg.
No. 2,301,350 issued December 21, 1999); and QFC QUALITY FOOD CENTERS ADVANTAGE
CARD (Reg. No. 2,733,050), all essentially for retail grocery store services
(collectively “the QFC Marks”). Respondent
does not dispute Complainant’s ownership of these marks. The Panel finds that such evidence establishes
Complainant’s rights in these marks pursuant to Policy ¶ 4(a)(i).”). See Disney Enters., Inc. v. Kudrna,
FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s
registration of the DISNEY trademark with the USPTO prior to the respondent’s
registration of the disputed domain name is sufficient to prove that the
complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
The Panel finds that despite Complainant’s wholly improper claim to the
contrary, Complainant does not own a trademark registration of the word mark
QFC, nor does the evidence submitted support Complainant’s claim of common law
rights in QFC alone.
However, Complainant need not prove that its mark is identical to the
domain name to satisfy this prong of the test.
The Panel finds that Respondent’s <qfc.com>
domain name is confusingly similar to Complainant’s QFC mark under Policy ¶
4(a)(i). Respondent is incorrect that a
domain name cannot be confusingly similar to a design mark. As previous panels have held, due to
the nature of Internet domain names, it is impossible to duplicate a design
mark in a domain name. See Experian Info. Solutions, Inc. v. Credit
Research, Inc., D2002-0095 (WIPO May 7, 2002) (“The fact that Complainant’s marks incorporate distinctive design
elements is irrelevant to this analysis.
Since a domain name can only consist of alphanumeric
text, design elements are ignored when considering this element.”); see also Commerce LLC v. Hatcher, FA
105749 (Nat. Arb. Forum Apr. 9, 2002) (“Moreover, the design elements of
Complainant’s mark cannot be captured in a domain name and thus are considered
irrelevant for the purposes of this analysis.”). The Panel agrees with these
observations and holdings and rules that the disputed domain name is confusingly
similar to Complainant’s QFC Marks under Policy ¶ 4(a)(i).
Rights
and Legitimate Interests: Policy ¶
4(a)(ii).
The Panel finds the issues on this element
in favor of Complainant.
Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that,
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the
mere assertion by the complainant that the respondent has no right or
legitimate interest is sufficient to shift the burden of proof to the
respondent to demonstrate that such a right or legitimate interest does exist).
Although Respondent is currently listed in
the WHOIS information as “
The Panel finds that the website that
currently resolves from the disputed domain name does not qualify as
demonstrable preparations to use the disputed domain name in connection with 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), particularly given the
misinformation Respondent has seen fit to provide this Panel as to its true
interest in the domain name (see below).
Thus, the Panel holds that Respondent does not have rights or legitimate
interests in the <qfc.com>
domain name under Policy ¶ 4(a)(ii). See
Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or
legitimate interests where the respondent has advanced no basis on which the panel
could conclude that it has a right or legitimate interest in the domain names,
and no commercial use of the domain names has been established); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that when the respondent declares its intent to develop a website, “[Policy ¶]
4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such
preparations to use the domain name, and 2) that such preparations were
undertaken ‘before any notice to [Respondent] of the dispute’”).
Moreover, Complainant contends that the
disputed domain name was previously used, when registered to a third party, to
resolve to a website that displayed hyperlinks to third-party websites in
direct competition with Complainant.
Such use, Complainant argues, is presumably for the commercial benefit
of Respondent through the accrual of click-through fees. Complainant also contends that the instant
Respondent and the previous owner of the disputed domain name are the same or
related entity. In its Additional
Submission, Complainant presents further evidence to support its contention
that Respondent and the previous owner of the disputed domain name are related
entities, including information that Phong Ngo, also known as Mike Ngo, has
been the President of the organization known as “SmartBuy” and associated with
Andy Tran both of whom are the previous owners of the mark. Complainant argues that Respondent Ngo’s role
in SmartBuy undermines his claim that he was unaware of how the site was being
used before SmartBuy was contacted by Fred Meyer in March of this year. Even if Ngo’s own allegations are believed,
however, they make clear that he owned the website for months while it was
being used to make money by steering traffic to QFC competitors.
Respondent denies that he had any knowledge
of this use. However, the panel is not
convinced of that assertion in light of the circumstances set forth herein
indicating the Respondent’s past relationships with Tran; the circumstances of
the transfer from Tran to Respondent; past conduct of Tran and Respondent
involving the same allegations; Respondent’s allegation that even though he did
not trust Tran, he permitted the improper use of the domain name; the fact that
Respondent has offered no independent evidence that it has ever been known as
“Quality Financial Center,” and the address given for the company at the
website Respondent put up at <qfc.com> after
this Complaint was filed (“333 City Blvd, 17th Floor, Orange CA 92868”) proves
to be wrong. There is no “
Registration
and Use in Bad Faith: Policy ¶
4(a)(iii).
The Panel finds the issues on this element
in favor of Complainant.
The Panel finds that the disputed domain
name is not currently in active use, and that the record lacks evidence
demonstrating Complainant’s intentions to use the <qfc.com> domain name.
Because of this, the Panel finds 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); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith).
The majority of the Panel find that
Respondent has registered and is using the disputed domain name to commercially
benefit from a likelihood of confusion created between Complainant’s marks and
the <qfc.com> domain
name. A minority of the Panel,
disagrees, but is persuaded that Respondent acquired the domain as part of a
coordinated effort with the previous owner to prevent the transfer of the
domain to Complainant with a resulting disruption of the previous owner's
revenues from the site. Thus the Panel
finds bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant contends that Tran and SmartBuy
have previously been the respondents in UDRP proceedings in which the disputed
domain names were transferred from the third party in question to the
respective complainants in those proceedings.
See Asset Mktg. Sys., LLC v.
SmartBuy Corp., et. al., D2004-0492 (WIPO Sept.
17, 2004); see also Disney Enters., Inc. v. Andy Tran d/b/a SmartBuy
Corp., FA 320239
(Nat. Arb.
Forum Oct. 20, 2004). In its Additional
Submission, Complainant presents various forms of evidence to support its
assertion that Respondent and the previous owner of the <qfc.com> domain name are related entities.
The relationship
of Andy Tran, SmartBuy, Phong Ngo, Mike Ngo and Respondent is not entirely
clear from all the conflicting evidence on the matter. However, the Panel notes this evidence:
· Tran transferred the mark immediately after it received Complainant’s complaint letter.
· Respondent claims to have purchased the mark in July or August of 2006 but left it with Tran who agreed to provide free hosting of the mark until Respondent’s website was ready.
· Respondent claims that this hosting was without his supervision and he had no knowledge of the fact that the website was being used to steer consumers to links advertising QFC competitors.
· The purchase by Respondent of the mark, the hosting agreement, the lack of supervision for months of Tran’s use of the site were all done by Respondent even though he did not trust Tran because Tran had cheated him in prior business relationships.
· Respondent at first denied that he was associated in any manner with Tran or SmartBuy. It turns out that the fact is that he and Tran had been partners and Respondent had actually been the President of SmartBuy.
· Respondent has not used the domain name in offering goods or services and is not commonly known by that name.
·
Although Respondent represented that his
organization “
·
There is no record in
· Tran and SmartBuy have previously made a profit from the practice of changing the registrant of a domain name before or during a UDRP proceeding in an attempt to disrupt that proceeding and circumvent the policy.
From all the
evidence set out and the circumstances surrounding these transactions as well
as the reasonable inference to be drawn from such, the Panel concludes that
Respondent had both actual and constructive knowledge of all the circumstances
surrounding the transfer from Tran to Respondent. We also conclude that Respondent was aware of
the improper usage of the mark by Tran during the period of the alleged hosting
of the mark for Respondent. Because of
this, all of Tran’s conduct and knowledge of the circumstances of the use of
this mark are imputed to Respondent.
The Panel finds
that using a domain name to display hyperlinks to third-party websites in
direct competition with Complainant constitutes bad faith registration and use
under Policy ¶ 4(b)(iii). See EBAY,
Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites); see also S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business).
There is an
additional reason for the Panel’s ruling and that is our view that the purpose
of this transfer of the mark from Tran to Respondent was to avoid the Complaint
filed. This conduct constitutes 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 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;
(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.
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 <qfc.com>
domain name be TRANSFERRED from Respondent to Complainant.
Timothy D. O’Leary, Presiding Panelist
Sally M. Abel, Panelist
Diane Cabell, Panelist
Dated:
June 11, 2007
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