Complainant is CenturyLink Intellectual Property, LLC of Denver, Colorado, United States of America (“USA” or “U.S.”), represented by Wiley Rein LLP, USA.
Respondent (collectively) is A Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd of Wilmington, Delaware, USA. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , and (collectively, “the Domain Names”) are registered with A, PTY LTD. (the “Registrar”). 3. Procedural History
The Complaint concerning the Domain Names and other domain names was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2016. On December 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 28, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 28, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint against the Domain Names only on January 20, 2017.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 13, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 14, 2017.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on February 23, 2017. 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
CenturyLink Intellectual Property, LLC (“CenturyLink”) is an S&P 500 company and is included among the Fortune 500 list of America’s largest corporations. It provides data, voice and managed services in local, national and select international markets through its fiber optic network and multiple data centers for businesses and consumers. It also offers advanced entertainment services under the CenturyLink, Prism TV, and DIRECTV brands.
Complainant publicly announced the adoption of the CenturyLink trade name and trademark on June 2, 2009. On July 1, 2009, Complainant announced, among other things, that it had changed its corporate identity to “CenturyLink.”
Complainant has an extensive global portfolio of CENTURYLINK trademark registrations, owning over 100 active global trademark registrations for its CENTURYLINK marks (“the Mark” or “the CENTURYLINK Mark”), including registrations in the USA (e.g., U.S. Trademark Registration No. 4,002,609, which issued on July 26, 2011).
The Domain Names were registered as follows: registered on June 7, 2016; registered on October 21, 2015; registered on December 24, 2015; registered on July 31, 2015; registered on June 7, 2016; registered on February 15, 2016; registered on May 19, 2016; registered on April 22, 2016; registered on October 27, 2015; and registered on May 10, 2016. The Domain Names redirect to one of a rotating number of websites that either contains pay-per-click links, advertisements for Complainant or a competitor of Complainant, or sites apparently designed for phishing or distribution of malware. 5. Parties’ Contentions A. Complainant
As of July 1, 2009, Complainant was serving more than 2.1 million broadband customers, more than 440,000 video subscribers and approximately 7.5 million access lines in 33 states—all under the name/mark CENTURYLINK. Complainant has consistently and extensively used the CENTURYLINK name/mark since that time and, as of September 30, 2015, Complainant was serving more than 6 million broadband customers, providing 11.9 million total access lines, and operating 59 data centers throughout North America, Europe and Asia under the name/mark CENTURYLINK. Such significant use of the Mark beginning in mid-2009 is evidence that the purchasing public recognized as early as 2009 that the CENTURYLINK Mark is indicative of the origin of the goods and services promoted by Complainant.
The Mark is highly distinctive and it has become well known to the public in the field of communications services through Complainant’s extensive advertising and use of it in commerce. Notwithstanding that the Domain Names either incorporate the Mark in its entirety or are misspelled versions of the Mark, with or without the addition of a generic word or term, they are each confusingly similar to Complainant’s CENTURYLINK Mark. Simply adding a common word or prefix to the Mark is insufficient to distinguish the Domain Names. Similarly, the addition of the generic word “home” to the CENTURYLINK Mark (as in the case of ) is likely to cause confusion among Internet users as to whether Complainant is affiliated with the Domain Names. The incorporation of Complainant’s prior trade name, Qwest, into the Domain Name (as in the case of ) is equally likely to cause confusion. Moreover, neither adding one or two letters (as in the case of and ), adding the letters “w” or “www” (as in the case of ), deleting a letter (as in the case of ), or substituting one or two letters (as in the case of , , , and ) is sufficient to change the overall impression and similarity between the Domain Names and the CENTURYLINK Mark. Further, the top-level portion of a domain name is disregarded when determining it is identical or confusingly similar.
Complainant has not authorized Respondent to use the CENTURYLINK Mark, and there is no evidence to suggest that Respondent has used, or undertaken any demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. Rather, when a visitor inadvertently types one of the Domain Names instead of Complainant’s domain names or , the Domain Names redirect the visitor to one of a rotating number of websites that either contain pay-per-click links, advertisements for Complainant or a competitor of Complainant, or sites apparently designed for phishing or distribution of malware. Respondent has no rights or legitimate interests arising from a bona fide offering of goods and services or from a legitimate noncommercial or fair use of the Domain Names. Moreover, given the highly distinctive nature of the CENTURYLINK Mark and the fact that Respondent is not and cannot be known by the name CenturyLink, the only conceivable purpose for using it in the Domain Names is to trade upon the goodwill associated with the Mark. Furthermore, Respondent could not be commonly known using one of the derivatives of the CENTURYLINK Mark. Indeed, there is absolutely no legitimate connection between the Domain Names and Respondent. The content of Respondent’s websites belies any notion that Respondent has rights or legitimate interests in the Domain Names. Several of the rotating websites associated with the Domain Names mimic Complainant’s business concept, appearing to promote Complainant’s services or those of its competitors. Using the Mark in connection with an e-commerce site purporting to sell communications services demonstrates that Respondent cannot have any rights or legitimate interest in the CENTURYLINK Mark. Lastly, having incorporated the CENTURYLINK Mark in its entirety or with only a minor misspelling into the Domain Names without Complainant’s consent for the sole purpose of obtaining pay-per-click revenue or other commission based upon the distinctiveness of the CENTURYLINK Mark is clearly neither noncommercial nor fair use.
The distinctive nature of the CENTURYLINK Mark establishes a presumption that any use of it relating to the same category of products or services is in bad faith. Given Complainant’s widespread reputation in the CENTURYLINK Mark, it is inconceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time it registered the Domain Names. Here, Respondent has taken advantage of Complainant’s CENTURYLINK Mark to attract traffic to their own site, which redirects visitors to one of a rotating number of websites that either contain pay-per-click links, advertisements for Complainant or a competitor of Complainant; or sites apparently designed for phishing or distribution of malware, providing further evidence of their bad faith registration. The websites displayed at the Domain Names (or redirected therefrom) do not sell CenturyLink services and do not link to any site legitimately selling CenturyLink services. Instead, Respondent is taking advantage of Complainant’s distinctive CENTURYLINK Mark to attract traffic to their own site, which redirects visitors to one of a number of sites that improperly trade off the CenturyLink name. Thus, Respondent registered, used, and continues to use the Domain Names in bad faith to obtain revenue from “clicks” from Internet visitors who are looking for CenturyLink services and/or for Complainant’s websites. Moreover, the evident purpose of several of the websites to which the Domain Names direct the public appears to be to damage Complainant’s trade and business by directing existing and potential customers to a competitor’s website. Such a use is highly likely to cause confusion for Internet users as they could perceivably believe that those products and services are sponsored or endorsed by Complainant. This could further lead to those Internet users purchasing products and services from Complainant’s competitors—and not Complainant. Although Respondent may not directly profit from this, the fact that a third-party would receive a commercial gain by Respondent’s use of the Domain Names is sufficient to prove bad faith.
Respondent has also engaged in bad faith by concealing their identity through the use of a privacy registration service. Lastly, in addition to Respondent’s bad faith registration and use of the Domain Names, Respondent appears to be engaged in a pattern and practice of registering domain names involving third-party trademarks and using the relevant domain names in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the reasonable facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant holds rights in the CENTURYLINK Mark from long-standing use and multiple trademark registrations, including U.S. Trademark Registration No. 4,002,609.
UDRP panels have consistently held that if a domain name “wholly incorporates a complainant’s trademark”, it is sufficient evidence that the domain name is identical or confusingly similar. See, e.g., Intesa Sanpaolo S.p.A. v. Tommy, Bartles associates, DCO2015-0001. Each of the Domain Names ; ; ; ; ; ; ; ; ; and incorporates the CENTURYLINK Mark “as is” or with some slight typosquatting variation.
Adding the generic word “home” to the CENTURYLINK Mark (as in the case of ) does not distinguish the Mark. Incorporating Complainant’s prior trade name, Qwest, into the Domain Name (as in the case of ) does not distinguish the Mark and is likely to cause confusion particularly because of the history behind the two companies. See Tata Sons Ltd. v. Ramadasoft, D2000-1713 (finding domain name that incorporates former trade name of TATA confusingly similar to complainant’s mark). Moreover, adding one or two letters to the Mark (as in the case of and ), adding the letters “w” or “www” (as in the case of ), deleting a letter (as in the cases of and ), substituting a letter (as in the case of ) or deleting and/or substituting letters (as in the case of and ) are not sufficient to change the overall impression and similarity between the Domain Names and the CENTURYLINK Mark. See, e.g., Populous Holdings, Inc. v. Matthew Casilla, Pupolous,WIPO Case No. D2014-0736; Hartford Fire Insurance Company v. Vicky Laster, Domain Mgr Trs Service,WIPO Case No. D2014-1848; Government Employees Insurance Company v. PrivacyP / Purple Bucquet,WIPO Case No. D2010-1746; Philip Morris USA Inc. v. Contact Privacy Inc. / Boubli Emmanuel,WIPO Case No. D2015-1034.
Further, the top-level portion of a domain name is generally disregarded when determining whether a domain name is identical or confusingly similar. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name because: (1) Complainant did not authorize Respondent to use the CENTURYLINK Mark; (2) Respondent does not appear to have used or undertaken any demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. That is, when someone types one of the Domain Names they are redirected to one of a rotating number of websites that either contains pay-per-click links, advertisements for Complainant or a competitor of Complainant, or sites apparently designed for phishing or distribution of malware. Given the distinctive nature of the CENTURYLINK Mark and the fact that Respondent is not and cannot be known by the name CenturyLink, the only conceivable purpose for using it in the Domain Names is to trade upon the goodwill associated with the Mark; (3) Respondent could not be commonly known by one of the derivatives of the CENTURYLINK Mark insofar as there is no legitimate connection between the Domain Names and Respondent; and (4) Several of the rotating websites associated with the Domain Names mimic Complainant’s business concept, appearing to promote Complainant’s services or those of its competitors. Using the Mark in connection with an e-commerce site purporting to sell communications services demonstrates Respondent’s lack of rights or legitimate interest in the CENTURYLINK Mark. Having incorporated the CENTURYLINK Mark in its entirety or with only minor changes into the Domain Names without Complainant’s consent for the sole purpose of obtaining pay-per-click revenue or other commissions based upon the distinctiveness of the CenturyLink Mark is clearly neither noncommercial nor fair use.
Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Names.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Names in bad faith. It is uncontroverted that Complainant’s worldwide use and registrations of the CENTURYLINK Mark precede the registration dates for the Domain Names. Incorporating the CENTURYLINK Mark in its entirety, with some slight typosquatting variation, or with the “QUEST” mark leads to the conclusion that Respondent knew of Complainant and Complainant’s rights in the Mark when it registered the Domain Names. Indeed some of the websites connected to the Domain Names use Complainant’s Mark or advertises Complainant in some way. Given Complainant’s reputation with the CENTURYLINK Mark and the uses of the Domain Names described here, it is inconceivable that Respondent did have actual notice of Complainant’s trademark rights at the time it registered the Domain Names.
Furthermore, Respondent has been and continues to be engaged in bad faith use of the Domain Names by using them to redirect visitors looking for CenturyLink services and/or Complainant’s websites to one of a rotating number of websites that either contains pay-per-click links, advertisements for Complainant or a competitor of Complainant, or sites apparently designed for phishing or distribution of malware.
The Panel therefore holds that Complainants have satisfied paragraph 4(a)(iii) of the Policy. 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 Domain Names , , , , , , , , , and be transferred to Complainant.
Harrie R. Samaras
Sole Panelist
Date: March 9, 2017
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