Quick Chek Corporation v.
Dynamo.com LLC c/o Dynamo.com Whois Protection
Claim Number: FA1006001329173
PARTIES
Complainant is Quick Chek Corporation (“Complainant”), represented by Peter J. Pizzi, of Connell Foley LLP, New Jersey, USA. Respondent is Dynamo.com LLC c/o Dynamo.com Whois Protection (“Respondent”), New York, USA.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <quickchek.com>, registered with ENOM, INC.
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. Nelson A. Diaz as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 9, 2010.
On June 10, 2010, ENOM, INC. confirmed by e-mail to the National
Arbitration Forum that the <quickchek.com> domain name is
registered with ENOM, INC. and that the
Respondent is the current registrant of the name. ENOM, INC.
has verified that Respondent is bound by the ENOM,
INC. 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 June 14, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of July 6, 2010 by which Respondent could file a
Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to postmaster@quickchek.com by
e-mail. Also on June 14, 2010, the Written Notice of the Complaint, notifying
Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to
all entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts.
A timely Response was received and determined to be complete on July 6, 2010.
On July 12, 2010, an Additional Submission of the Complainant was
received which complies with Supplemental Rule 7.
On July 12, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Nelson A. Diaz as Panelist.
RELIEF
SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
As shown on the
registration certificate, the Complainant has rights to the mark QUICK CHEK
dating back to 1967 (registration dating back to May 2000). While registration
of the QUICK CHEK mark post-dates the domain name registration (the domain name
registration dating back to February 2000) the Complainant has common law rights
to the subject mark and the family of related marks dating back to 1967 as well
as statutory rights to the subject marks dating back to May 2000, and because
the Respondent does not appear to be using the domain name in any manner, let
alone in connection with a bona fide offering of goods or services. Respondent
is not currently using the domain name in any way. At present, when visiting
the domain in question, the site automatically forwards to a
oneconomy.com site, displaying the “wowname” logo. The oneconomy.com site
offers certain domain name registration and web hosting services
B. Respondent
Respondent,
Dynamo.com, is a long-established branding company executing name
conception, logos and brand graphics, trademark research, and promotional copy
for multi-national corporations including Intel, Procter and Gamble, and Time
Warner, Inc. The company QUICKCHEK/ORDERCHECKS
is a retailer of personalized bank checks founded in Seattle, Washington in
February 2000. Respondent
registered the domain name QUICKCHEK.COM in February 2000 as the new
and non-infringing trademark name for the QUICKCHEK/ORDERCHECKS entity. Complainant
had no trademark registration until over a year and a half after Respondent
acquired QUICKCHEK.COM. Issues
of common-law trademark should not be raised where, at the time of domain
registration there was not a single online reference to the Complainant. Respondent and QUICKCHEK/ORDERCHECKS were
Seattle companies at the time of registration and there was no New York office
until 2004. Virtually all of
Complainant's trade is confined to a 30-mile radius in New Jersey. In 2004, prior to any contact or dispute
concerning the QUICKCHEK.com name, Respondent registered QUICKCHEQUE.COM to
serve the Australian and European market.
C. Additional Submissions
Complainant
alleges that there is no documentary support that any business or entity
called“QUICKCHEK/ORDERCHECK” existed at any time. There is no documentary
support that“QUICKCHEK/ORDERCHECK” was ever a company based in Seattle. In
fact, none of the key assertions upon which Dynamo.com relies upon in its
Response is supported by documentary evidence
FINDINGS
Policy
¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii)
“no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith
registration and use, were violated by the Respondent.”
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 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.
Complainant has submitted evidence showing that it owns numerous
trademark registrations with the United States Patent and Trademark Office
("USPTO") for its QUICK CHEK mark (e.g., Reg. No. 2,490,372 filed May 5, 2000; issued Sept. 18,
2001). The Panel finds that Complainant
has established rights in its QUICK CHEK mark under Policy ¶ 4(a)(i) through its
trademark registrations with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat.
Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights
in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with
the USPTO).
However, Respondent’s registration of the disputed domain name on
February 9, 2000 predates both the filing date and registration date of
Complainant’s mark. Therefore, the Panel
finds that a trademark registration is not necessary for Complainant to
establish rights under Policy ¶ 4(a)(i), as long as Complainant
is able to show that it possesses common law rights in its mark through an
established secondary meaning attached to its mark. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist);
see also Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark).
Complainant alleges that it has been operating in commerce under the
QUICK CHEK mark since 1967. Complainant
asserts that its trademark application refers to its “first use” of its mark as
being in 1967, and that it has continuously used its mark since that time. The Panel finds that Complainant has
established common law rights in its mark under Policy ¶ 4(a)(i). See
Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21,
2004) (finding that the complainant’s listing of first use of the BOB JONES
UNIVERSITY mark on its USPTO registration information establishes that the
complainant had used the mark continuously and extensively since the time of first
use, thereby establishing rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant further argues that Respondent’s <quickchek.com> domain name is identical to its QUICK CHEK
mark. Complainant notes that the only
changes made to its mark are the deletion of the space between the terms of the
mark, and the addition of the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds that the <quickchek.com> domain name is
identical to Complainant’s QUICK CHEK mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l
Prop. Assocs., FA
937650
(Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between
terms and the addition of a gTLD do not establish distinctiveness from the
complainant’s mark under Policy ¶ 4(a)(i); see
also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb.
Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the
words of Complainant’s mark, as well as the addition of a gTLD does not
sufficiently distinguish the disputed domain name from the mark pursuant to
Policy ¶ 4(a)(i).”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent has not used the disputed domain name, and therefore could not have become commonly known by the domain name. Further, Complainant argues that it has not granted Respondent permission to use its mark in any way. The Panel finds that the WHOIS information identifies “Dynamo.com LLC” as the registrant of the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Complainant alleges that
Respondent’s disputed domain name resolves to the third-party website located
at <oneconomy.com> that offers pay-per-click advertising and hyperlinks
to websites unrelated to Complainant’s convenience store business. Complainant argues that Respondent’s use of
the disputed domain name is evidence that Respondent lacks rights and legitimate
interests in the domain name.
Complainant contends that Respondent’s use of the disputed domain name
to display third-party links to unrelated businesses and websites is not a use
in connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the
disputed domain name to display third-party links and advertisements to
businesses unrelated to Complainant does not constitute 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
Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007)
(finding that where a respondent has failed to offer any goods or services on
its website other than links to a variety of third-party websites, it was not
using a 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
pursuant to Policy ¶ 4(c)(iii)); see also
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy).
Complainant contends that Respondent has the
disputed domain name resolving to the third-party website
<oneconomy.com>, and that Respondent is using the disputed domain name to
collect click-through fees from the third-party links displayed through the
disputed domain name. The Panel finds that
Respondent’s use of the disputed domain name to divert Internet users seeking
Complainant’s goods to advertisements and third-party links of businesses
unrelated to Complainant is evidence of bad faith registration and use under
Policy ¶ 4(b)(iv).
See T-Mobile USA, Inc. v. utahhealth,
FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues
Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum
Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to
maintain a pay-per-click site displaying links unrelated to the complainant and
to generat-through revenue suggested bad faith registration and use under
Policy ¶ 4(b)(iv)).
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 <quickchek.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Nelson A. Diaz (ret.), Panelist
Dated: July 14, 2010
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