DECISION

Qwest Communications International, Inc. v. DiscountQwest.com c/o Steven Chase

Claim Number: FA0312000223006

PARTIES

Complainant is Qwest Communications International, Inc., Denver, CO (“Complainant”) represented by Anthony J. Malutta, Esq., of Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111.  Respondent is DiscountQwest.com c/o Steven Chase, P.O. Box 46671, Tampa, FL 33647 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <discountqwest.com>, registered with Register.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.

P-E H Petter Rindforth as Panelist.

PROCEDURAL HISTORY

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

On January 6, 2004, Register.com confirmed by e-mail to the Forum that the domain name <discountqwest.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.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 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@discountqwest.com by e-mail.

A timely Response was received and determined to be complete on January 23, 2004.

An Additional Submission from the Respondent was received by the Forum on February 3, 2004. This Additional Submission does not comply with the Forum’s Supplemental Rule 7 and will therefore not be considered by the Panel.

On February 2, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed P-E H Petter Rindforth as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is one of the largest international telecommunication service companies in the world and serves more than 30 million customers in the United States and abroad.  The company completes over 240 million phone calls and carries 600 million e-mails daily just in its local phone service area.  Globally, the Complainant also offers web hosting services, managed solutions, high-speed Internet access, private networks, wireless data and other technologies and applications that enable global communications. 

Complainant has been operating under the fanciful QWEST name and mark in the United States since 1981 and now owns more than 385 active QWEST trademark applications and registrations in more than 48 countries worldwide – among them is Registration Number 1,966,694 issued in the US on April 9, 1996.

Complainant states that it has successfully enforced its trademark rights against numerous infringers and that this is a straightforward case of cybersquatting involving a famous trademark and name, QWEST, registered by a company purportedly doing business as Chase Communications.  

In selecting the domain name, Respondent has simply added the generic term “discount” to Complainant’s QWEST mark.  This generic term does not distinguish the domain name from the mark under the Policy. Respondent is using the domain name in connection with telecommunication services that are identical to those that are provided by the Complainant, however the use of the QWEST mark has no bona fide connection to Respondent’s business.

The Respondent lacks rights to and legitimate interests in the disputed domain name because Respondent is not authorized to use any of Complainant’s trademarks. Nonetheless, Respondent’s website leaves Internet users with the impression that Respondent is somehow affiliated with Complainant because Respondent has copied and uses Complainant’s QWEST logo on its website.

Respondent is not commonly known by the disputed domain name.

Respondent registered and is using the domain name to disrupt Complainant’s business.  Disruption can be inferred where Respondent registers a variation of Complainant’s mark by adding a descriptive or generic word.

Respondent registered and uses the domain name to attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s QWEST mark.

Respondent acted in order to prevent Complainant from reflecting its principal service mark in corresponding domain names. 

B. Respondent

The Respondent concedes that Complainant is known as QWEST and owns broad rights in its mark, however, the QWEST mark is not fanciful and the domain name is not an obvious reference to the QWEST services provided by Complainant. 

Respondents use of the word “qwest” was designed to be associated with the alternative meaning of “seeking or pursing something.”  “The goal was to create the image of an expedition undertaken in search of discounts.” Respondent initially tried to register the domain name <discountquest.com>, but it was unavailable.

Respondent also denies that it provides identical services to those of Complainant, as Respondent is not a Local Exchange Carrier or telecommunications carrier of any sort and does not market itself as if it is.

Respondent concedes that it is not licensed to use the QWEST mark.  However, Respondent has formerly sold QWEST accounts via authorized agents of QWEST as a sub-agent.

Respondent denies that Complainant’s mark or logo appears on Respondent’s website and asserts that the site does not confuse visitors in any way.

Respondent is using the domain name to offer consumers discounted prices on goods and services and has hundreds of thousands of dollars invested in the marketing of the domain name.

Respondent denies registering and using the disputed domain name to disrupt Complainant’s business or to attempt to confuse Complainant’s customers, because there is no evidence that a single visitor to Respondent’s website has been confused by the domain name.

DISCUSSION AND FINDINGS

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.

Identical and/or Confusingly Similar

Complainant is alleging rights in the QWEST mark, which it claims is fanciful, as a result of multiple registrations with the United States Patent and Trademark Office as well as applications and registrations in more than 48 countries worldwide. This Panel notes that under US trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002). Further, Complainant states that it has been operating under the QWEST name and mark in the United States since 1981 and therefore the mark is likely well known in the telecommunication service area.

The Panel concludes that the domain name consists of the word “discount”, followed by the trademark QWEST. “Discount” is a generic addition, with no distinctiveness. See Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000). The term “discount” refers to the trademark QWEST in a way indicating a low-price or discount offer for products/services of the said trademark.

The Panel finds that the domain name is confusingly similar to Complainant’s trademark QWEST, and accordingly finds for Complainant under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

It is an undisputed fact that the Respondent is not licensed or authorized by the Complainant to use the QWEST trademark. However, Respondent states that it has formerly sold QWEST accounts via authorized agents of QWEST as a sub-agent. Even if that would, under certain circumstances, legitimate some sort of reference to Complainant’s trademark, the Respondent also claims that its use of the word “qwest” was designed to be associated with the alternative meaning of “seeking or pursing something” and, accordingly, not to be associated with the sale of QWEST accounts. The Panel therefore concludes that Respondent’s prior connection to Complainants goods and services cannot create any rights or legitimate interests in the disputed domain name.

The essence of Respondent’s argument is that Respondent is commonly known by <discountqwest.com>, under Policy ¶ 4(c)(ii), because it has made thousands of business contacts and over 400 of those contacts routinely converse with e-mail addresses that end in the domain name. This Panel has no reason to doubt the figures mentioned. However, Respondent registered the domain name on February 26, 2002 – more than 20 years after Complainant’s first use of the trademark QWEST. Respondent states on its web site (copy submitted by Respondent) that “Discountqwest.com has been actively engaged within Florida as a Telecommunications and Data Communications consulting firm since 1993”, but it seems that (at least) before 2002 the Respondent rather used Chase Communications as its trade name. Respondent has not presented any independent evidence, such as media references, market survey or affidavits, that it is commonly known by the disputed domain name.

The Complainant and Respondent are both in the telecommunication business, the domain name incorporates Complainant’s well known trademark and has only been used for two years. These circumstances clearly speak against Respondent’s arguments that it is commonly known by the domain name.

The Panel concludes that the Respondent has no rights or legitimate interests respecting the domain name, and finds for Complainant under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the disputed domain name to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii). In addition, Complainant alleges that Respondent registered and uses the domain name to attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s QWEST mark. Respondent denies these allegations for the reason that there is no evidence that a single visitor to Respondent’s website has been confused by the domain name.

The Panel finds that Respondent had knowledge of Complainant’s rights in the QWEST mark, which Complainant claims is fanciful, because of Respondent’s admission that it formerly sold QWEST accounts.  Respondent’s statement that its use of the word “qwest” was designed to be associated with the alternative meaning of “seeking or pursing something” therefore lacks credibility. It seems obvious to this Panel that Respondent registered and is using the domain name in bad faith. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse.").

Apart from the disputed domain name (incorporating Complainants trademark QWEST), which appears repeatedly on Respondent’s web site, the QWEST mark and logo cannot be found at the copies of the web site as provided by Respondent. Respondent is however clearly in the same or at least very similar business  – telecommunication – as Complainant, and there are several references to Complainant’s competitors on the site. This Panel therefore finds it likely that Respondent has registered the domain name primarily for the purpose of disrupting the business of the Complainant. See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

The Panel finds that the Respondent has registered and is using the domain name in bad faith, and finds for Complainant under Policy 4(a)(iii).

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

P-E H Petter Rindforth, Panelist
Dated: February 13, 2004

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