Generic Top Level Domain Name (gTLD) Decisions

DECISION

Qwest Communications International Inc. v. Lorna Kang

Claim Number:  FA0305000158161

PARTIES

Complainant is Qwest Communications International, Inc., Denver, CO, USA (“Complainant”) represented by Anthony J. Malutta, of Townsend and Townsend and Crew LLP. Respondent is Lorna Kang, Telok Intan Perak, MALAYSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwqwest.com>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com. 

PANEL

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 19, 2003; the Forum received a hard copy of the Complaint on May 23, 2003.

On May 23, 2003, Iholdings.Com, Inc. d/b/A Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <wwwqwest.com> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com 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 May 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 17, 2003 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@ wwwqwest.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On June 25, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1.      Respondent’s <wwwqwest.com> domain name is confusingly similar to Complainant’s QWEST mark.

2.      Respondent does not have any rights or legitimate interests in the <wwwqwest.com> domain name.

3.      Respondent registered and used the <wwwqwest.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Qwest Communications International Inc., holds rights in the QWEST mark.  Complainant has been operating under the QWEST name and mark in the United States since at least as early as 1981.  Complainant holds several registrations for the QWEST mark in the United States (e.g., U.S. Reg. No. 1,966,694, registered on April 9, 1996).  In addition, Complainant owns more than 385 active QWEST trademark applications and registrations in more than 48 countries. 

Complainant offers a wide range of telecommunication goods and services around the world.  Complainant serves more than 30 million customers in the United States and abroad, completing over 240 million phone calls and carries over 600 million emails daily in its local phone service area.

Respondent, Lorna Kang, registered the <wwwqwest.com> domain name on November 28, 2002 and is not licensed or authorized to use Complainant’s QWEST mark for any purpose.  Respondent links the disputed domain name to the <ownbox.com/treasure/search.html> domain name which subjects consumers to a series of advertisements that purport to offer credit card services, music downloading, green cards, and Complainant’s competitor’s wireless telephone and service plans.  There are at least seven prior decisions against Respondent for registering and using domain names that correspond with famous brands.

DISCUSSION

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.

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.

Identical and/or Confusingly Similar

Complainant has established rights in the QWEST mark through registration with the U.S. Patent and Trademark Office and subsequent continuous use of the mark in commerce.  See The Men’s Wearhouse, Inc. v. Brian 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”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing).

Respondent’s <wwwqwest.com> domain name is confusingly similar to Complainant’s QWEST mark.  The only difference is that Respondent added “www” to Complainant’s mark.  Such difference is insufficient to differentiate Respondent’s <wwwqwest.com> domain name from Complainant’s QWEST mark.  Therefore, Complainant has established that the <wwwqwest.com> domain name is confusingly similar to Complainant’s QWEST mark.  See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see alsoMarie Claire Album v. Geoffrey Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to Complainant's MARIE CLAIRE trademark).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent is using the disputed domain name to redirect Internet users to a series of advertisements that are all unrelated to Complainant’s QWEST mark.  The advertisements at Respondent’s domain name offer credit card services, music downloading and green cards, and Complainant’s competitor’s wireless telephone and service plans.  Respondent is taking advantage of Complainant’s mark by diverting Internet users to such commercial domain names for its own financial gain.  Respondent is also tarnishing Complainant’s mark by subjecting Internet users to a series of intrusive and unsolicited ads.  Respondent’s redirection from the <wwwqwest.com> domain name to advertising websites that are unrelated to Complainant does not establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).  See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name). 

Respondent, Lorna Kang, is not “commonly known” by the disputed domain name.  Both the name given in the WHOIS contact information for the disputed domain name and the fame surrounding Complainant’s use of the QWEST mark support the reasonable inference that Respondent is not commonly known by the disputed domain name.  In addition, Respondent is not licensed or authorized to use the <wwwqwest.com> domain name.  Furthermore, there is no evidence before the Panel to the contrary.  Thus, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  Respondent creates a likelihood of confusion as to the source of sponsorship of Respondent’s website in the minds of Internet users when Respondent uses Complainant’s famous QWEST mark to trap Internet users who misspell Complainant’s domain name and then redirects them to Respondent’s website where they are subjected to various pop-up advertisements.  The content displayed on the re-directed website creates a presumption that Respondent is commercially profiting from the unauthorized use of Complainant’s QWEST mark in the <wwwqwest.com> domain name.  Additionally, evidence reveals that Respondent has a history of registering confusingly similar variations of famous marks in domain names in order to commercially benefit.  This Policy was intended to remedy infringement by habitual typosquatters, like Respondent.  See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wwwqwest.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  July 8, 2003