Embarq Management Company v. BizZoo Biz c/o Biz BizZoo.Biz
Claim Number: FA0706001010322
Complainant is Embarq Management Company (“Complainant”), represented by Nicola
M. Shiels,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <businessembarq.com> and <embarq-dsl.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 18, 2007.
On
On
On June 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 16, 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@businessembarq.com and postmaster@embarq-dsl.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <businessembarq.com> and <embarq-dsl.com> domain names are confusingly similar to Complainant’s EMBARQ mark.
2. Respondent does not have any rights or legitimate interests in the <businessembarq.com> and <embarq-dsl.com> domain names.
3. Respondent registered and used the <businessembarq.com> and <embarq-dsl.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Embarq
Management Company, owns a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for the EMBARQ mark (Reg. No. 3,211,948 issued
Respondent registered the <businessembarq.com>
domain name on
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint 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.”).
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.
Complainant has established rights in the EMBARQ mark under
Policy ¶ 4(a)(i) through registration of the mark with
the USPTO. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum
Respondent’s <businessembarq.com> and <embarq-dsl.com> domain names are both confusingly similar to Complainant’s EMBARQ mark as they incorporate the mark in its entirety and both add the generic top-level domain (“gTLD”) “.com” to the mark. Additionally, the <businessembarq.com> domain name adds the generic or descriptive word “business” to the mark and the <embarq-dsl.com> domain name adds a hyphen and the abbreviation “dsl” to the mark. Panels have previously held, as the Panel holds here, that the addition of a gTLD is not relevant to the determination of whether a mark is confusingly similar under Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
Respondent’s <businessembarq.com> domain name simply adds the generic or descriptive word “business” to the mark. Complainant is a business which operates under the EMBARQ mark and thus, the domain name is a generic description of Complainant. The Panel finds that the addition of the word “business” does not sufficiently alter the mark to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”).
Finally, Respondent’s <embarq-dsl.com>
domain name is confusingly similar to Complainant’s EMBARQ mark as the addition
of a hyphen and the abbreviation “dsl” to the mark does not sufficiently alter
the mark to negate the confusingly similar aspects of the domain name to the
mark. The abbreviation “dsl,” which is a
common abbreviation for “digital subscriber line,” describes the business of Complainant—the
telecommunications field. The Panel also
finds that the addition of a hyphen does not sufficiently distinguish the
disputed domain name from the mark.
Therefore, the Panel finds that Respondent’s <embarq-dsl.com> domain name is confusingly similar under
Policy ¶ 4(a)(i).
See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the respondent’s domain name combines
the complainant’s mark with a generic term that has an obvious relationship to
the complainant’s business); see also
Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <businessembarq.com> and <embarq-dsl.com> domain
names. The Panel finds that Complainant’s
submission establishes a prima facie case which shifts the burden to
Respondent to show that it has rights or legitimate interests in the disputed
domain names. See
The Panel may assume that Respondent has no rights or
legitimate interests here as Respondent failed to respond to the
Complaint. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names). However, the Panel will consider all available evidence
before determining whether Respondent has rights or legitimate interests in the
disputed domain names under Policy ¶ 4(c).
Complainant contends that Respondent is using the <businessembarq.com> and <embarq-dsl.com> domain names to redirect Internet users to Respondent’s websites, which bear a close resemblance to Complainant’s website under the EMBARQ mark, and attempts to obtain personal information from Internet consumers. The Panel finds that Respondent’s use of the disputed domain names to mimic Complainant’s website in order to obtain personal information constitutes “phishing” and is neither 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). See American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Finally, Respondent offers no evidence to
indicate that it is commonly known by either the <businessembarq.com> or
the <embarq-dsl.com> domain names. Respondent’s WHOIS information identifies
Respondent as “BizZoo Biz c/o Biz
BizZoo.Biz.” Therefore, the Panel finds
that Respondent has not established rights or legitimate interests under Policy
¶ 4(c)(ii). See America West Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <businessembarq.com> and the <embarq-dsl.com> domain
names, which are confusingly similar to Complainant’s EMBARQ mark, to redirect
Internet users to Respondent’s website which imitates Complainant’s website and
uses Complainant’s mark prominently on the websites in order to obtain personal
information from Internet consumers for the assumed profit of Respondent. The Panel finds that Internet users seeking
Complainant’s goods and services may become confused as to the source,
affiliation, endorsement and sponsorship of the disputed domain names. Presumably, Respondent is benefiting from
this confusion. Therefore, the Panel
finds that such use by Respondent of the disputed domain names is evidence of
bad faith registration and use under Policy ¶ 4(b)(iv). See Vivendi Universal Games v. Ballard,
FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at
registration, and a copy of the complainant’s website was used at the domain
name in order to facilitate the interception of the complainant’s customer’s
account information, the respondent’s behavior evidenced bad faith use and
registration of the domain name); see also America Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum
Additionally, Respondent is using the <businessembarq.com> and the <embarq-dsl.com> domain
names to obtain Internet users’ personal information, including credit card
information and account numbers. The
Panel finds that such use by Respondent to obtain Internet users’ personal
information is evidence of phishing and represents bad faith registration and
use under Policy ¶ 4(a)(iii). See Juno Online Servs.,
Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a
domain name that “is confusingly similar to Complainant’s mark, redirects
Internet users to a website that imitates Complainant’s billing website, and is
used to fraudulently acquire personal information from Complainant’s clients”
is evidence of bad faith registration and use); see also Capital One Fin.
Corp. v. Howel, FA 289304 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <businessembarq.com> and <embarq-dsl.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 30, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum