Qwest Communications International Inc.
v. QC Publishing Group, Inc. and Victor Horne
Claim Number: FA0406000286032
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 QC Publishing Group, Inc. and Victor Horne (collectively, “Respondent”), represented by Victor Horne, 17822 Davenport Rd, Ste B, Dallas, TX 75252.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <qwestcorp.com>,
registered with Register.com.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Terry
F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 11, 2004; the Forum received a hard copy of the Complaint
on June 11, 2004.
On
June 15, 2004, Register.com confirmed by e-mail to the Forum that the domain
name <qwestcorp.com> is
registered with Register.com and that 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
June 15, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 6,
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 by e-mail to postmaster@qwestcorp.com.
A
timely Response was received and determined to be complete on July 1, 2004.
Respondent
made an Additional Submission, also dated July 1, clarifying information
contained in its initial submission.
On July 12, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Terry F. Peppard
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Qwest
Communications International Inc. is one of the largest telecommunications
service companies in the world. It has been operating under the QWEST name and
trademark in the United States since at least 1981. The QWEST mark, which is registered in many jurisdictions around
the world, is strongly associated by the general public with its
telecommunications products and services.
That mark is also incorporated in Complainant’s <qwest.com> domain
name.
Although
Respondent does business under a name using the word “Quest,” it has registered
and is using the disputed domain name, which includes Complainant’s famous and
arbitrary QWEST mark, and has linked that domain name to its corporate website
<qcpublishing.com>. The only difference between Complainant’s mark and
the disputed domain name is Respondent’s inclusion of the generic term “corp,”
which does not change the obvious reference to Complainant’s QWEST mark.
Complainant
has not licensed or otherwise permitted Respondent to use any of its
trademarks, nor has it licensed or otherwise permitted Respondent to register
or use any domain name incorporating any of those marks.
Respondent
is not commonly known by the disputed domain name, and there is no
correspondence between Respondent’s business names (“QC Publishing Group, Inc.”
and “QuestCorp Publishing Group, Inc.”) and that domain name.
Respondent’s
use of the disputed domain name results in confusion among Internet users and
unfairly draws unknowing consumers to Respondent’s website. Respondent must have registered the disputed
domain name principally for the purpose of disrupting Complainant’s
business.
For
a time, Respondent carried on its website a link to <mpower.com>, the
website of Mpower Communications, a telecommunications company which is both a
customer and competitor of Complainant.
B.
Respondent
Respondent,
incorporated in the state of Texas and based in Dallas, Texas, has been doing
business as QuestCorp Publishing Group, Inc. since March of 2000. QuestCorp is the informal name of this
business, which produces magazines and targeted marketing materials for its clients.
Respondent
had as its sole motivation for registering the disputed domain name a
legitimate interest in capturing otherwise lost business traffic caused by
inadvertent misspellings of the company’s name (“QuestCorp”) among internet
users. Consistent with this motivation,
Respondent has also registered the domain name <guestcorp.com>.
This
has been done on the advice of business consultants who recommend that
companies doing business on the Internet anticipate common misspellings of
their business names, including phonetic equivalents, then register and use
domain names with those common misspellings.
Many
businesses throughout the United States have names beginning with “Qwest,” as
is evidenced by the appearance of such names as “Qwest Auto Sales” and “Qwest
for Excellence, Inc.” in the Dallas area phone directory.
Respondent’s
website is devoted exclusively to promoting the company’s legitimate custom
publishing business. Respondent has
made no effort either to compete with Complainant or to disparage its mark. The QuestCorp logo, displayed on
Respondent’s website, is distinctly different from that of Complainant, and
Respondent’s website does not insinuate any association with Complainant or its
business.
Respondent’s
registration and use of the disputed domain name is fair and reasonable because
“QwestCorp” is the exact phonetic equivalent of “QuestCorp.” It would not be reasonable to permit
Complainant to claim inherent rights in every possible derivative of its
principal mark.
Mpower
Communications was, until May of 2003, Respondent’s telecommunications provider
and managed its website. Mpower
therefore hosted Respondent’s domain names on its server and provided Internet
service to the company. Respondent now
operates its own server to host its websites, and there is no longer any
relationship between Respondent and Mpower Communications. No inference of bad
faith can properly be drawn from the former association.
C.
Additional Submission
Respondent’s
Additional Submission merely corrects an editorial error in its original
submission, and does not purport to change the pertinent facts.
FINDINGS
Complainant is the owner of a duly
registered trademark, QWEST, used in connection with its telecommunications
business, and Complainant has not licensed or otherwise permitted Respondent to
use its mark or to include it in Respondent’s domain name.
The disputed domain name <qwestcorp.com> is confusingly
similar to Complainant’s QWEST mark.
Complainant is not the exclusive holder
of rights to business use of the word “Qwest.”
Respondent has, before receiving notice
of the instant dispute, used the disputed domain name in connection with a bona
fide offering of goods and services, and has thus acquired rights to and
legitimate interests in that domain name.
Complainant has failed to show that
Respondent has registered and is using the disputed domain name in bad faith.
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 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.
It is undisputed that Complainant has
rights to the registered QWEST mark in connection with its telecommunications
business, and it is also beyond dispute that Respondent has incorporated the
entirety of Complainant’s mark in its domain name. It is well settled that inclusion of a registered mark in a
domain name establishes, without more, the element of confusing similarity
under Policy ¶ 4(a)(i). See Oki Data Americas, Inc. v. Asdinc.com,
D2001-0903 (WIPO Nov. 6, 2001); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO
Feb. 5, 2001); see also Nikon Inc.
v. Technilab Inc., D2000-1774 (WIPO Mar. 7, 2001).
The addition of the generic term “corp”
to Complainant’s mark to complete the disputed domain name does not change this
result. See BASF Aktiengesellschaft v. MostDomains.com,
FA 117331 (Nat. Arb. Forum, Sep. 19, 2002); see also Burnham Corp. v. Domain Research and Sales,
FA 102741 (Nat. Arb. Forum, Jan. 14, 2002).
Accordingly, Complainant has established
to the satisfaction of the Panel that the <qwestcorp.com>
domain name is confusingly similar to its QWEST mark within the meaning of
Policy ¶ 4(a)(i).
That Complainant has rights in its mark
does not necessarily mean that Respondent cannot have rights to or legitimate
interests in respect of a domain name which is confusingly similar to that
mark. See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat.
Arb. Forum, Apr. 11, 2003); see also K2r
Produckte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000).
Complainant’s rights in the QWEST mark
are limited to its application to the tele-communications industry. The word “qwest,” a phonetic variant on the
common word “quest,” while perhaps once unique, has over time acquired currency
across a wide spectrum of business activity.
Respondent aptly points to the use of the word “Qwest” by a variety of
business enterprises in the Dallas, Texas, area, including an auto sales
firm. A routine search of the Internet
reveals similar instances, of which the Panel takes the equivalent of judicial
notice, ranging from a charter yacht to a hotel to a line of recreational
vehicles.
Respondent used the disputed domain name
for approximately four years in connection with its custom publishing business
before it became aware of this dispute.
That alone establishes in Respondent rights to and legitimate interests
in the disputed domain name under Policy ¶ 4(c)(i).
For these reasons, the panel concludes
that Complainant has failed to meet its burden of proof that Respondent has no
rights or legitimate interests in respect of the disputed domain name within
the meaning of Policy ¶ 4(a)(ii).
Complainant has the burden of proof as to
all three elements of Policy ¶ 4(a).
Because Complainant has failed to establish the requirements of Policy ¶
4(a)(ii), it is unnecessary for the Panel to consider the bad faith
requirements of Policy ¶ 4(a)(iii).
However, the Panel notes that there is nothing in the proof submitted
which is persuasive of the proposition that Respondent has proceeded in bad
faith either in registering or in using the disputed domain name in the
circumstances presented by this proceeding.
The Panel is particularly impressed by the facts that Respondent has
operated its website for approximately four years for legitimate business
purposes not in competition with Complainant’s business and with no evident
intent to disrupt or divert traffic from that business. See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum, Oct. 17,
2000).
The Panel therefore concludes that
Complainant has also failed to meet its burden of proof under Policy ¶
4(a)(iii).
DECISION
Complainant
having failed to establish two of the three elements required under the ICANN
Policy, the Panel concludes that relief must be, and it is, hereby, DENIED.
Terry F. Peppard, Panelist
Dated: July 23, 2004
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