DECISION

Qwest Communications International, Inc. v. NONE c/o Martin Snytsheuvel

Claim Number:  FA0312000222969

PARTIES

Complainant is Qwest Communications International, Inc., (“Complainant”), represented by Anthony J. Malutta of Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111.  Respondent is NONE c/o Martin Snytsheuvel, (“Respondent”), 8900 Beach Front Drive, Las Vegas, NV, 89117.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <qwestdexyellowpages.com>, registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically December 30, 2003; the Forum received a hard copy of the Complaint December 31, 2003.

On December 31, 2003, Intercosmos Media Group, Inc. d/b/a directNIC.com confirmed by e-mail to the Forum that the domain name <qwestdexyellowpages.com> is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a directNIC.com verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a directNIC.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 6, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 26, 2004, 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@qwestdexyellowpages.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 February 5, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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. The domain name registered by Respondent, <qwestdexyellowpages.com>, is confusingly similar to Complainant’s QWEST and QWEST DEX marks.

2. Respondent has no rights to or legitimate interests in the <qwestdexyellowpages.com> domain name.

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

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

FINDINGS

Complainant is one of the largest telecommunications services companies in the world.  Serving more than 30 million customers, Complainant completes more than 240 million phone calls and carries 600 million e-mails on its local phone service.  Complainant began operating under the QWEST name and mark in the United States in as early as 1981.  It holds many registrations for the QWEST mark (e.g. Reg. Nos. 1,966,694, 1,979,485 (with “COMMUNICATIONS”), 2,210,992, and 2,513,382, registered on April 9, 1996, June 11, 1996, December 15, 1998, and November 27, 2001, respectively) with the U.S. Patent and Trademark Office (“USPTO”), as well as registrations for the QWEST DEX mark (e.g. Reg. Nos. 2,579,973, 2,592,637, 2,592,656, and 2,597,748 (with “ADVANTAGE”), registered June 5, 2001, July 9, 2002, July 9, 2002, and July 23, 2002, respectively) with the USPTO.  It also holds the registration for the <qwestdex.com> domain name.

Respondent registered the <qwestdexyellowpages.com> domain name October 29, 2001.  The web site at this domain name is the Registrar’s default page, showing the registrar’s directNIC logo and displaying links for common search categories.  The page states that the domain name “is for sale!”  It also provides a link to facilitate the sale of the domain name: “if you are interested in purchasing this domain, please contact the owner.”  Complainant alleges that Respondent has engaged in a pattern of registering more than 250 domain names incorporating famous marks, including over 100 incorporating the words “yellow pages.”

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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the QWEST and QWEST DEX marks through continuous use of the marks in commerce and registration with the USPTO. 

The domain name registered by Respondent, <qwestdexyellowpages.com>, is confusingly similar to Complainant’s QWEST DEX mark.  The only difference is the addition of the term “yellow pages” to Complainant’s mark.  The term “yellow pages” is a common generic term used to represent a book that compiles business names and phone numbers by search categories.  It is a commonly used term in the telecommunications industry.  The addition of a generic term to a mark in a domain name does not sufficiently distinguish the domain name from the mark. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

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

Rights to or Legitimate Interests

Complainant established that it has rights in the mark contained in its entirety in the disputed domain name.  Complainant alleged that Respondent has no such rights and Respondent did not submit a Response in this proceeding to show that it has such rights.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

By posting an offer to sell the domain name on the site upon which the domain name resolves, Respondent has not demonstrated a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and has not shown a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Am. Nat’l Red Cross v. Domains a/k/a Best Domains a/k/a Barry, FA 143684 (Nat. Arb. Forum March 4, 2003) (stating that “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that, under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

Respondent is not commonly known as QWEST, QWEST DEX, or <qwestdexyellowpages.com>, given the WHOIS registration information for the domain name.  Moreover, because of the fame of Complainant’s QWEST and QWEST DEX marks, it is even more unlikely that Respondent could show that Respondent is commonly known as the disputed domain name.  As a result, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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"); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).

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

Registration and Use in Bad Faith

Complainant also alleged that Respondent registered and passively held the domain name in bad faith. Respondent offered to sell the undeveloped domain name.  Because the domain name merely incorporated Complainant’s mark, the Panel may find that an offer to sell to the general public as bad faith registration and use, pursuant to Policy ¶ 4(b)(i).  See CBS Broadcasting Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

Additionally, given the fame of Complainant’s QWEST and QWEST DEX marks, the Panel finds that Respondent had actual knowledge of Complainant’s mark when it registered the <qwestdexyellowpages.com> domain name.  Registration of a domain name that is confusingly similar to a Complainant’s mark, despite actual knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(b)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <qwestdexyellowpages.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: February 21, 2004

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