Level 3 Communications, Inc v. Domain
Deluxe
Claim
Number: FA0312000220051
Complainant is Level 3 Communications, Inc. (“Complainant”),
represented by Adam L. Scoville of Faegre & Benson, LLP,
1700 Lincoln St., Suite 3200, Denver, CO 80202. Respondent is Domain
Deluxe (“Respondent”), P.O. Box 7628, General Post Office, Hong Kong 1, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwlevel3.com>, registered with Enom,
Inc.
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 18, 2003; the Forum received a hard copy of the
Complaint on December 22, 2003.
On
December 29, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <wwwlevel3.com> is registered with Enom, Inc. and that
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
December 29, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 19, 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 to postmaster@wwwlevel3.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
January 26, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin 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. Respondent’s <wwwlevel3.com>
domain name is confusingly similar to Complainant’s LEVEL 3 mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwlevel3.com> domain name.
3. Respondent registered and used the <wwwlevel3.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Level 3 Communications, Inc., holds numerous registrations for the LEVEL 3 mark
worldwide, including U.S. Reg. Nos. 2,400,493 and 2,586,143 and Hong Kong Reg.
No. B13543/2000. Complainant’s registered rights in these marks predate
Respondent’s registration of the <wwwlevel3.com> domain name, and
are used by Complainant in connection with the providing of telecommunications,
Internet service provider and Internet backbone services. Online, Complainant
uses its mark at the <level3.com> domain name, which it has used since
1998 to host a website informing the public and Complainant’s customers about
its services.
Respondent,
Domain Deluxe, registered the <wwwlevel3.com> domain name on
September 30, 2002, without license or authorization to use Complainant’s LEVEL
3 mark for any purpose. Respondent has used the disputed domain name to offer
its domain name registration for sale through Domain Deluxe, to host a series
of hyperlinks to pay-per-click search engines, and to host pop-up advertising.
The disputed domain name is currently inactive.
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.
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 LEVEL 3 mark through successful registration of the
mark with the proper governmental agencies worldwide. See Microsoft Corp. v. J. Holiday Co., D2000-1493 (WIPO
Feb. 20, 2000) (“registration of a mark is prima facie evidence of
validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden of refuting this assumption”).
Respondent’s <wwwlevel3.com>
domain name is confusingly similar to
Complainant’s LEVEL 3 mark, as it simply adds the World Wide Web prefix (“www”)
to Complainant’s registered LEVEL 3 mark. See Dana Corp. v. $$$ This Domain Name Is For Sale $$$,
FA 117328 (Nat. Arb. Forum Nov. 19, 2002) finding Respondent's
<wwwdana.com> domain name confusingly similar to Complainant's registered
DANA mark because Complainant's mark remains the dominant feature; see also Neiman Marcus Group, Inc. v. S1A,
FA 128683 (Nat. Arb. Forum Dec. 6, 2002) holding confusing similarity has been
established because the prefix "www" does not sufficiently
differentiate the <wwwneimanmarcus.com> domain name from Complainant's
NEIMAN-MARCUS mark.
Accordingly, the
Panel finds that the <wwwlevel3.com> domain name is confusingly similar to Complainant’s LEVEL 3 mark under
Policy ¶ 4(a)(i).
Respondent’s use
of Complainant’s LEVEL 3 mark in its domain name, with the simple addition of
the “www” prefix, is evidence in and of itself that Respondent lacks rights or
legitimate interests in the disputed domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the
name******, FA 156839 (Nat. Arb. Forum June 23, 2003) holding that
Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of
Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent
lacks rights or legitimate interests in the disputed domain name vis á vis
Complainant; see also Nat’l Ass’n
of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting, as a means of redirecting
consumers against their will to another site, does not qualify as a bona fide
offering of goods or services, whatever may be the goods or services offered at
that site.”). Respondent’s actual uses of the domain name, offering the domain
name registration for sale and using Complainant’s mark in the domain name to
generate advertising revenue, bolsters rather than undercuts the conclusion
that Respondent lacks rights or legitimate interests in the disputed domain
name. Therefore, the Panel concludes that Complainant prevails on this element.
See Mothers Against Drunk
Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) holding that
under the circumstances, Respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name; see
also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum
Mar. 17, 2003) finding that Respondent’s diversionary use of Complainant’s mark
to attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names.
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<wwwlevel3.com> domain
name under Policy ¶ 4(a)(ii).
Respondent
registered and used the disputed domain name in bad faith. By registering a
domain name that clearly seeks to capitalize on the goodwill that Complainant
has built up around the LEVEL 3 mark and the traffic Complainant has attracted
to the <level3.com> domain name, Respondent registered the <wwwlevel3.com>
domain name in bad faith. By using its
domain name as a platform to expose misdirected Internet users to advertising,
Respondent is using the disputed domain name in bad faith. See Canadian Tire Corp., Ltd. v. domain
adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May
22, 2003) holding that the absence of a dot between the “www”and
“canadiantire.com” in the <wwwcanadiantire.com> domain name was likely to
confuse Internet users and evidences bad faith registration and use of the
domain name; see also Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period
after the “www” portion of [a] web-address,” evidence that the domain name was
registered and used in bad faith; see
also Nat’l Ass’n of Prof’l Baseball
Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors.
Typosquatting is inherently parasitic and of itself evidence of bad
faith.”); see also Philip Morris
Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) finding that
Respondent’s registration of an infringing domain name to redirect Internet
users to banner advertisements constituted bad faith use of the domain name.
Additional
evidence that the domain name was registered and used in bad faith can be found
in Respondent’s willingness to sell its domain name registration. As
Complainant (or perhaps one of its competitors) would be the only conceivable
market for the <wwwlevel3.com> domain name, the Panel infers that Respondent’s intent in registering the
disputed domain name was ultimately to sell its domain name registration to
Complainant, which evidences that the domain name was registered and used in
bad faith pursuant to Policy ¶ 4(b)(i). See Pocatello
Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat.
Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name]
bad faith is some accompanying evidence that the domain name was registered
because of its value that is in some way dependent on the trademark of another,
and then an offer to sell it to the trademark owner or a competitor of the
trademark owner"); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) finding
that “general offers to sell the domain name, even if no certain price is
demanded, are evidence of bad faith”.
The Panel thus
finds that Respondent registered and used the <wwwlevel3.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is 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 <wwwlevel3.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
February 3, 2004
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