Questar Corporation v. ICS INC.
Claim Number: FA1205001444695
Complainant is Questar Corporation (“Complainant”), represented by Tracey Harrach of Maschoff Gilmore & Israelsen, Utah, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <questargas.org>, registered with Tucows Inc.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2012; the National Arbitration Forum received payment on May 17, 2012.
On May 18, 2012, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <questargas.org> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2012 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@questargas.org. Also on May 21, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant provides natural gas and related services under the QUESTAR GAS mark.
B. Complainant owns trademark registrations with the United States Patent and Trademark and Office (“USPTO”) for the QUESTAR GAS mark (e.g., Reg. No. 2,300,595 registered December 14, 1999).
C. Complainant’s QUESTAR GAS mark is well known. Complainant has expended tremendous time, money and resources to build goodwill relating to this mark.
D. The disputed domain name is identical to Complainant’s mark.
E. Respondent is not commonly known by the disputed domain name.
F. The disputed domain name resolves to a parked page displaying sponsored links to third-party sites.
G. Respondent commercially benefits from these links through the collection of click-through fees.
H. Respondent’s website housed at the disputed domain name harbors a harmful computer virus.
A. The Panel notes that Respondent registered the disputed domain name on April 9, 2012.
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."
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.
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.”).
Complainant has presented the Panel with its USPTO trademark registrations for the QUESTAR GAS mark (e.g., Reg. No. 2,300,595 registered December 14, 1999). This constitutes sufficient evidence to establish Complainant’s rights in the marks under Policy ¶ 4(a)(i). See Victoria's Secret Stores Brand Mgmt., Inc. v. Machuszek, FA 945052 (Nat. Arb. Forum May 7, 2007) (finding that “Complainant has established rights in the VICTORIA’S SECRET mark through [multiple] registrations [with the USPTO] under Policy ¶ 4(a)(i).”). Moreover, the fact that Respondent operates outside of the jurisdiction in which these trademark registrations are held is irrelevant under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s domain name is comprised of Complainant’s QUESTAR GAS mark, only deleting the space between the words and adding the generic top-level domain (“gTLD”) “.org.” The Panel finds that the deletion of spaces between the words in a mark and the affixation of a gTLD is not sufficient to distinguish a disputed domain name from a 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)).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that it has not authorized or licensed Respondent’s use of its trademark. The Panel notes that because Respondent has failed to produce a Response, there is nothing in the record that would indicate that Respondent is commonly known by the <questargas.org> domain name. Moreover, the WHOIS information for the <questargas.org> domain name indicates that the domain name registrant is “ICS INC.” There is no similarity between this name and the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <questargas.org> domain name for the purposes of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
The Panel finds that Respondent uses the <questargas.org> domain name to resolve to a website featuring hyperlinks to third-party businesses. Such use constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant alleges, and this Panel accepts as true, that Respondent’s website housed at the disputed domain name harbors a harmful computer virus. In support of its claims, Complainant offers that Respondent’s website was blocked by both Complainant’s and Complainant’s attorney’s firewalls when access was first attempted. Furthermore, Complainant asserts that its attorney’s computer had to undergo anti-virus cleaning after visiting Respondent’s site. The Panel therefore finds that Respondent is without rights or legitimate interests in the <questargas.org> domain name pursuant to Policy ¶ 4(a)(ii) for this reason as well. See Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii)).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant’s trademark registrations for the QUESTAR GAS mark existed well before the registration of the <questargas.org> domain name. Complainant has also provided evidence of fame of this mark. Complainant also provides the compelling argument that because the term QUESTAR is a coined mark with no other meaning, Registrant’s use of this term must refer to Complainant. From the uncontroverted evidence presented, this Panel infers that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel concludes that Respondent registered the <questargas.org> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel further assumes that Respondent realizes a commercial profit from the operation of its website and that its use of an identical domain name is an attempt to create confusion as to Complainant’s affiliation with Respondent. Respondent’s attempt to create confusion in order to financially benefit from Complainant’s goodwill constitutes attraction for commercial gain, supporting a finding of bad faith under Policy ¶ 4(b)(iv).
Respondent’s use of the <questargas.org> domain name to harbor a harmful computer virus also exhibits bad faith registration and use under Policy ¶ 4(a)(iii). See Google Inc. v. Gridasov, FA 474816 (Nat. Arb. Forum July 5, 2005) (finding the respondent’s use of the disputed domain name to “divert Internet users to a website that uses tactics that may be harmful to users’ computers” is evidence of bad faith registration and use).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <questargas.org> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 27, 2012
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