Complainant is CenturyLink Intellectual Property LLC of Denver, Colorado, United States of America, represented by Wiley Rein LLP, United States.
Respondent is By Proxy, Inc. Domain Names of Scottsdale, Arizona, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Name109, Inc. (“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 2, 2014. On July 2, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. That same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact information and other details of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2014. In accordance with the Rules, paragraph 5(a), the due date for response was July 30, 2014. Because of the Center’s delayed receipt of a compressed video file that had been included in Complainant’s annexes, the Center re-notified the Complaint on July 16, 2014; the new due date for response became August 5, 2014. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on August 6, 2014.
The Center appointed Debra J. Stanek as the sole panelist in this matter on August 15, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is a telecommunications company. It owns a United States federal trademark registration for the mark CENTURYLINK for broad categories of consulting services related to telecommunications, computers, computer networks, and Internet-related activities, such as hosting, e-commerce, and Internet safety, among other things. The registration issued in 2011.
The disputed domain name was registered to Respondent at least as of January 2, 2014. As of this writing, the domain name does not resolve to an active website. Previously, it redirected visitors to sites that displayed various warnings and made available for download various “updates”, that appears to have included at least one virus. 5. Parties’ Contentions A. Complainant i. Identical or Confusingly Similar
Complainant is one of the largest telecommunications companies in the United States. It owns an extensive international portfolio of trademark registrations for the mark CENTURYLINK, including a United States registration that issued in July 2011. In addition, consumers have come to recognize the CENTURYLINK mark and to associate it with Complainant and its goods and services.
The CENTURYLINK mark is inherently distinctive and has become well-known to the public in the field of communications services as a result of Complainant’s extensive advertising and use since 2009.
The disputed domain name is confusingly similar to Complainant’s mark. It introduces the letter “e” in the middle of the mark, creating a domain name that a visitor seeking Complainant could easily enter through a typographical error. ii. Rights or Legitimate Interests
Complainant has not authorized Respondent to use its mark in a domain name.
There is no evidence that Respondent has used or made preparations to use the name in connection with a bona fide offering of goods or services. Instead, the disputed domain name is being used to lure visitors intending to visit Complainant’s site into downloading harmful virusues and “bloatware.”
Complainant submitted a video file, attested to by its counsel, that depicts what a visitor to the website would see. The file shows that the visitor was redirected to another site where a warning about an outdated Flash Player was displayed. The only option displayed was “OK,” which, when clicked again redirected the visitor to a site that displayed a pop-up warning about media content requiring a update, which was available for download. The download included a series of programs, including one that was identified by third party software as a heuristic virus. iii. Registered and Used in Bad Faith
It is clear that Respondent registered the domain name in order to trade on the good will of Complainant’s CENTURYLINK mark in an effort to entice visitors to download harmful software and bloatware.
Respondent is intentionally attracting visitors to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark.
Further, Respondent provided false registration information, identifying itself as “By Proxy, Inc. Domain Names” in an effort to impersonate the “Domain Names By Proxy, Inc.” proxy service. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect to it; and
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b). A. Identical or Confusingly Similar
Complainant has established its rights in the mark CENTURYLINK by virtue of the evidence of the United States federal trademark registration.1
Complainant does not argue that the domain name is identical to its mark. Thus, Complainant must establish that it is confusingly similar to Complainant’s mark, determined with reference to the degree of resemblance between the domain name and mark at issue as to appearance, sound, and meaning. See, e.g., WIPO Overview 2.0, paragraph 1.2 (generally, test for confusing similarity involves straightforward comparison of trademark and alphanumeric string making up the domain name).
Respondent’s domain name differs only as to one letter, the additional “e”, and the addition of the generic Top-Level Domain (“gTLD”). The difference due to the gTLD is not relevant for purposes of this comparison. The Panel agrees that a single additional letter does little to differentiate the domain name from the mark. The domain name strongly resembles Complainant’s mark visually and audibly, and because it appears to be a misspelling of Complainant’s mark also carries a similar connotation.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests that is not rebutted by the respondent. See WIPO Overview 2.0, paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c). Complainant’s evidence regarding how the disputed domain name is being used establishes that it is not being used with a bona fide offering of goods or services. There is no reason to believe that Respondent is commonly known by the domain name. Nor does it appear that use of the domain name is noncommercial or otherwise a fair use.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy sets out four non-exclusive circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Under these circumstances, the Panel concludes that Repsondent registered and is using the disputed domain name in bad faith. Complainant’s mark is well-known and appears to predate registration of the disputed domain name. Given the similarity between the disputed domain name and Complainant’s mark, it seems most probable that Respondent was aware of Complainant and its mark and registered the domain name with Complainant and its mark in mind.
In light of these facts and the adverse inferences that arise from Respondent’s failure to respond to the Complaint and registration under a name that resembles the name of a another proxy service, Domain Names By Proxy, Inc., the Panel finds that Complainant has established that Respondent has registered and is using the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Debra J. Stanek
Sole Panelist
Date: August 27, 2014
1 The copy of the certificate of registration provided by Complainant identifies the owner of the registration as Embarq Holdings Company LLC rather than Complainant. However, a recent search of information relating to the registration in the Trademark Electronic Search System, an online database of the United States Patent and Trademark Office, identifies Complainant as the current holder of the registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.5 (panel may undertake limited factual research into the public record). The Panel does not credit the list of trademark registrations submitted by Complainant, see Rules, paragraph 3(b)(xv) (complaint “shall” include “documentary or other evidence, including a copy of . . . any trademark or service mark registration upon which the complaint relies . . . .”), or the other, unsupported assertions regarding consumer recognition of and advertising expenditures related to the mark as establishing Complainant’s rights.
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