XO Communications Inc. v. Registrant
info@fashionid.com 9876543210
Claim Number:
FA0212000137676
PARTIES
Complainant
is XO Communications Inc., Reston, VA, USA (“Complainant”) represented
by David Kelley of Finnegan Henderson Farabow Garrett & Dunner
L.L.P. Respondent is Registrant
info@fashionid.com 9876543210, Yemen, Yemen 86, YEMEN (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <xocommunications.com>,
registered with OnlineNIC, Inc.
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.
Complainant submitted a Complaint to the
National Arbitration Forum (the "Forum") electronically on December
20, 2002; the Forum received a hard copy of the Complaint on December 23, 2002.
On January 6, 2003, OnlineNIC, Inc.
confirmed by e-mail to the Forum that the domain name <xocommunications.com>
is registered with OnlineNIC, Inc. and that Respondent is the current
registrant of the name. OnlineNIC, Inc. verified that Respondent is bound by
the OnlineNIC, 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 January 6, 2003, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of January 27, 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@xocommunications.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 10, 2003, 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.
Complainant requests that the domain name
be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. The domain name registered by Respondent,
<xocommunications.com>, is confusingly similar to Complainant’s
XO, XO.COM and XO COMMUNICATIONS marks.
2. Respondent has no rights or legitimate
interests in the <xocommunications.com> domain name.
3. Respondent registered and used the <xocommunications.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant, XO Communications, is a leading communications service provider and offers a comprehensive array of data and voice communications services. More specifically, Complainant’s offerings include local and long distance telephone services, Internet access, private data networking and web hosting, among others.
Complainant holds numerous U.S. Patent and Trademark applications for the XO family of marks, including, inter alia: App. No. 76/136,135 for the XO COMMUNICATIONS mark filed on September 27, 2000; App. Nos. 76/124,990; 76/124,991 and 76/124,994 for the XO mark filed on September 8, 2000. Complainant also holds numerous international trademark registrations for its XO mark, including: Australian Reg. No. 864,595 issued January 31, 2001; Chilean Reg. No. 602.602 issued on August 30, 2001; and Israeli Reg. Nos. 142,455; 142,456; and 142,458.
Complainant changed its name from Nextlink Communications, Inc. to XO Communications on September 25, 2000. Since that date, Complainant has continuously used the XO, XO.COM and XO COMMUNICATIONS marks as well as the XO Communications trade name to identify its business products and services. Further, Complainant used the XO.COM mark and domain name even earlier via a predecessor-in-interest (Internex Information Service), which had registered and used the <xo.com> domain name since at least as early as 1995.
Complainant showcases its products and services at its website located at the <xo.com> domain name. Complainant recorded more than $723. million as revenue in 2000, more than $1,258. billion in 2001 and more than $960. million for the first three quarters of 2002. Complainant expends “many millions of dollars each year” to advertise and promote the XO mark and related products and services.
Based on Complainant’s extensive use and promotion of the XO family of marks, Complainant’s marks have attained a significant amount of fame in the communications community and substantial goodwill.
Complainant was first to register the domain name <xocommunications.com>. Complainant’s registration of the disputed domain name inadvertently lapsed and was deleted. After this error by Complainant, Respondent registered the domain name.
Respondent, Registrant info@fashionid.com 9876543210, registered the <xocommunications.com> domain name on October 4, 2002. Complainant’s investigation of Respondent’s use of the domain name indicates that the domain name resolves to a search engine website that prominently features links advertising DSL services, Internet services and telecommunications services of third parties that directly compete with Complainant.
When Internet users view the website online, the URL indicates the <xocommunications.com> domain name in the address line of the browser, but when Respondent’s website is printed, the originating URL displays a <domainsponsor.com> domain name. DomainSponsor is a company that offers revenue programs for domain name registrants.
Respondent also has programmed a pop-up advertisement that offers a “$25 free gift” when the domain name is first accessed. When Internet users attempt to close Respondent’s website, another pop-up window appears asking Internet users to reset their homepage to another location.
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 Complainant to 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 in this proceeding that it has rights in the XO mark through registration with various international trademark authorities and by continuous use of the mark in commerce to denote its data and voice communications services. Although Complainant asserts rights in the XO COMMUNICATIONS and XO.COM marks as well as the XO mark, for the purposes of this proceeding, Complainant’s rights in the XO mark suffice to support a successful argument under the Policy.
Respondent’s
<xocommunications.com> domain name is confusingly similar to
Complainant’s XO registered mark. Complainant’s XO registration represents
“computer and telecommunications hardware and software;” therefore,
Respondent’s addition of the word “communications” is inconsequential because
it describes Complainant. Complainant operates under the XO Communications
business moniker and is known throughout the communications industry by that
designation. See 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); see
also Marriott Int’l v. Café au
lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s
domain name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
Furthermore,
addition of a top-level domain (such as “.com”) fails to create any
distinguishing characteristics in the domain name and is not considered
relevant when conducting an analysis under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top-level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant established that it has
rights to and interests in the mark included in the disputed domain name.
Respondent did not respond to Complainant’s assertions, thereby failing to
fulfill its burden of demonstrating rights or legitimate interests in the
subject domain name. Respondent’s failure to respond allows all reasonable
inferences made by Complainant to be regarded as true, unless clearly
contradicted by the evidence. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also 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).
Respondent’s
failure to submit evidence of circumstances that may suggest it has rights or
legitimate interests in the disputed domain name corroborates Complainant’s
assertion that Respondent has none. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc.,
AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests
where no such right or interest was immediately apparent to the Panel and where
Respondent did not come forward to suggest any right or interest it may have
possessed).
Complainant’s
uncontested evidence indicates that Respondent is using the subject domain name
to divert those who access the website to numerous entities unaffiliated with
Complainant or the XO mark. As stated, Respondent’s domain name advertises
telecommunication providers in direct competition with Complainant.
Respondent’s domain name also attempts to profit from the use of pop-up
advertising and mousetrapping (i.e., not allowing Internet users to freely exit
the website while subjecting them to multiple browser windows and pop-up
advertisements). Respondent’s attempt to profit from the opportunistic use of
Complainant’s established XO mark in the domain name fails to establish rights
or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also Big Dog Holdings, Inc. v.
Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use
when Respondent diverts consumers to its own website by using Complainant’s
trademarks).
No
evidence before the Panel suggests that Respondent is commonly known by the <xocommunications.com>
domain name. Respondent’s WHOIS information suggests it is known by the
complicated “Registrant info@fashionid.com 9876543210” identification.
Additionally, Respondent’s failure to use the XO mark or any variation thereof
on its website indicates that Respondent does not have rights or legitimate
interests in the domain name under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Accordingly,
the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant urges that Respondent registered and is using the domain name in bad faith. What constitutes bad faith registration and use of the domain name is articulated under Policy ¶ 4(b). As the Complaint alleges, Respondent uses the domain name for a search engine website that prominently features links advertising third parties that directly compete with Complainant’s services. Complainant’s investigation indicates that Respondent’s website originates from DomainSponsor, a company that offers revenue programs for domain name registrants. Respondent’s domain name also utilizes pop-up advertisements and a technique known as “mousetrapping” to exploit unsuspecting Internet users that access the website. A reasonable inference for the Panel to make is that Respondent’s registration and use of the domain name is likely to confuse Internet users into mistakenly believing that Respondent and the services of Complainant’s competitors are offered, authorized or sponsored by Complainant. Therefore, Respondent’s attempt to profit from use of Complainant’s XO mark in the infringing domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).
Additionally, Respondent’s registration and subsequent infringing use of a domain name previously registered and held by Complainant also indicates bad faith, absent evidence to the contrary. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of Complainant’s failure to renew a domain name).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <xocommunications.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 21, 2003.
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