The Complainant is Centurylink Intellectual Property LLC of Denver, Colorado, United States of America ("United States"), represented by Wiley Rein LLP, United States.
The Respondent is Ashwani Pandey, ANS of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 14, 2017. On June 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 the Respondent of the Complaint, and the proceedings commenced on June 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 18, 2017.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on July 20, 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
The following facts are undisputed.
The Complainant is one of the largest telecommunications companies in the United States. The Complainant operates a global business in cloud infrastructure and hosted IT solutions for enterprise customers. The Complainant provides data, voice and managed services in local, national and select international markets through its advanced fiber optic network and multiple data centers for businesses and consumers. The company also offers advanced entertainment services.
The Complainant is the owner of a number of registrations for the CENTURYLINK trademark in various jurisdictions, including but not limited to the United States, the European Union and India. These registrations include the United States Trade Mark (word mark) CENTURYLINK, registration number 4002609, registered on July 26, 2011, for services in class 38 (the "Trademark").
The Domain Name was registered by the Respondent on June 1, 2016. The Domain Name resolves to a website on which digital television and Internet support services are offered (the "Website"). 5. Parties' Contentions A. Complainant
Insofar as relevant, the Complainant contends the following.
The Domain Name reproduces the Trademark, which is highly distinctive.
The Domain Name is confusingly similar to the Trademark in that it incorporates the Trademark in its entirety. The addition of the generic words "customer services" to the Trademark is likely to cause confusion among Internet users as to whether the Complainant is affiliated with the Domain Name.
The Respondent does not have any rights or legitimate interests regarding the Domain Name. The Complainant has not authorized the Respondent to use the Trademark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Domain Name and the Website are being used to lure consumers who believe they are visiting the Complainant's legitimate website to unknowingly pay exorbitant fees for unneeded support services and/or download harmful malware to their computer.
The Respondent has taken advantage of the Trademark to attract traffic to its own site, which passes itself off as The Complainant's legitimate website in an apparent attempt to entice users to pay exorbitant fees for unneeded support services and/or download harmful malware to their computer. The Respondent registered the Domain Name as a clear attempt to simulate the Trademark. The Respondent then configured the Domain Name to a website that mimics the Complainant's legitimate website in an attempt to defraud visitors or force them to download malware. The foregoing activities clearly demonstrate that the Respondent's registration and use of the Domain Name has been in bad faith.
In addition, the 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. Among the domain names owned by the Respondent are such domain names as the following: , , , , , . B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the aforementioned trademark.
The Complainant has shown that it has rights in the Trademark.
The Domain name incorporates the Trademark in its entirety, and adds the descriptive words "customer services" after the Trademark. The Panel finds that the addition of the words "customer services" does not suffice to distinguish the Domain Name from the Trademark since the element "centurylink" is the dominant part of the Domain Name. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 ("[T]he fact that a domain name wholly incorporates a Complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.")
Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.
For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.
In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making 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 Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that "CenturyLink" is the Respondent's name or that the Respondent is commonly known as "CenturyLink". There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Complainant's marks, or to apply for or use any domain name incorporating any of the Complainant's trademarks.
The question whether the Respondent purporting to be a service provider, is using the Domain Name in connection with a bona fide offering of goods or services, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc., supra (regarding the domain name ).
In order for the use to be qualified as a "bona fide offering of goods or services", the offering of the goods or services must meet several requirements, referred to as the "Oki Data criteria".
Those include, at minimum, the following:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the website of the domain name to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;
- the respondent must not try to corner the market in all domain names, thus it must not deprive the trademark owner of reflecting its own mark in a domain name;
- the website of the domain name must accurately disclose the respondent's relationship with the trademark owner; it may not, for example, falsely suggest that the respondent is the trademark owner, or that its website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of the complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website).
The use of the Domain Name can, inter alia, not be considered a bona fide offering of goods or services as the Respondent is not actually offering the goods or services at issue. As asserted by the Complainant, supported in evidence and not rebutted by the Respondent, the Respondent is using the website to lure consumers who believe they are visiting the Complainant's legitimate website to unknowingly pay exorbitant fees for unneeded support services and/or download harmful malware to their computer.
Furthermore, given the circumstances of this case, the Panel finds that the Respondent's lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions "non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights" (see Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang,WIPO Case No. D2005-0090).
Therefore, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant and the absence of a reply, the Panel finds that the Complainant's Trademark and activities are well known throughout the world. In addition, the Website refers to the Complainant's services. Accordingly, in the Panel's view, the Respondent must have been aware of the Complainant's existence and rights when it registered the Domain Name and must have been aware when using the Domain Name. This is emphasized by the fact that it uses the Domain Name to unfairly promote customer services related to the Complainant's services.
This behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e., that by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
Although the lack of a reply by the Respondent as such cannot by itself lead to the conclusion that there is use in bad faith, the cumulative circumstances as outlined in the decision are sufficient for the Panel to find that the use by the Respondent is in bad faith.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used 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 Domain Name be transferred to the Complainant.
Willem J. H. Leppink
Sole Panelist
Date: July 30, 2017
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