WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain
Case No. D2017-0144
1. The Parties
The Complainant is CenturyLink Intellectual Property LLC of Denver, Colorado, United States of America (“United States” or “U.S.”), represented by Wiley Rein LLP, United States.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Protection Domain of Panama City, Panama.
2. The Domain Names and Registrar
The disputed domain name <centurylinl.com>, <cetnurylink.com>, <cneturylink.com> and <wcenturylink.com> are registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2017. On January 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 3, 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 February 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 1, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on March 3, 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 Complainant is the third largest telecommunications company in the United States, and is a global leader in cloud infrastructure and hosted IT solutions for enterprises. The Complainant provides data, voice and managed services in local, national and select international markets for businesses and consumers. The Complainant also provides advanced entertainment services under different brands, including CenturyLink.
The Complainant publicly adopted the CenturyLink trade name and trademark on June 2, 2009, and changed its corporate identity to CenturyLink on July 1, 2009. As of September 30, 2015, the 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.
The Complainant owns many trademark registrations around the world for its CENTURYLINK trademark, including:
- U.S. Trademark No. 4,002,609 for CENTURYLINK, registered on July 26, 2011
- European Union Trademark No. 10,971,182 for CENTURYLINK, registered on October 29, 2012
- China Trademark No. 11,209,915 for CENTURYLINK, registered on December 7, 2013
- International Trademark No. A0032101 for CENTURYLINK, registered on October 3, 2012
The disputed domains were registered on the following dates:
- <centurylinl.com> on November 23, 2009
- <cetnurylink.com> on August 3, 2011
- <cneturylink.com> on April 18, 2012
- <wcenturylink.com> on August 30, 2012
The disputed domain names each redirect to one of a rotating number of websites that either contain pay-per-click (“PPC”) links, advertisements for the Complainant or a competitor of the Complainant, or allegedly to sites designed for phishing or distribution of malware.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant submits that its CENTURYLINK trademark is inherently distinctive, and has become well known to the public in the field of telecommunications services through extensive advertising and use since at least mid-2009.
The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s registered CENTURYLINK trademark. The disputed domains either incorporate the CENTURYLINK trademark in its entirety, or differ by only one or two letters. The Complainant submits that such minor changes do not distinguish the disputed domain names from the CENTURYLINK trademark, and in fact constitute examples of deliberate cyber-squatting.
Rights and Legitimate Interests
The Complainant submits that it has never authorized the Respondent to use the CENTURYLINK trademark. Further, there is no evidence to suggest the Respondent has used, or undertaken demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods and services. The Complainant submits that the Respondent is using the disputed domain names to trade upon the goodwill associated with the CENTURYLINK trademark.
The Complainant contends that the Respondent could not be commonly known using one of the derivatives of the CENTURYLINK mark. The Respondent’s names do not appear in the disputed domain names or on the associated websites. There is therefore no legitimate connection between the disputed domain names and the Respondent.
Further, the Complainant submits that the Respondent is not making legitimate noncommercial or fair use of the disputed domain names. The Respondent’s websites are alleged to redirect visitors to obtain pay-per-click revenue or other commissions based on the distinctiveness of the CENTURYLINK trademark.
Registered and Used in Bad Faith
The Complainant submits that the Respondent has registered and used the disputed domain names in bad faith. The Complainant submits the Respondent is trading on the goodwill of the CENTURYLINK trademark and directing customers to harmful websites. The Respondent’s websites are alleged to redirect visitors to a rotating number of websites that either contain PPC links, advertisements for the Complainant or a competitor of the Complainant, or sites allegedly designed for phishing or distribution of malware.
The Complainant contends that the Respondent is interfering with the Complainant’s ability to conduct business by registering and using confusingly similar domain names that direct customers to competitor websites.
Further, the Complainant submits that the Respondent concealing its identity through the use of a privacy registration service demonstrates bad faith. The Complainant also alleges that the Respondent has engaged in a pattern of registering domain names involving third-party trademarks and using the relevant domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Respondent did not file any Response in this proceeding, and as a result, the Complainant’s evidence and submissions are uncontradicted.
A. Identical or Confusingly Similar
The Panel finds that the Complainant owns registered trademark rights in the CENTURYLINK trademarks by virtue of its numerous international registrations, including U.S. Trademark No. 4,002,609.
The Panel further finds that the domain names <centurylinl.com>, <cetnurylink.com>, <cneturylink.com> and <wcenturylink.com> are confusingly similar with the Complainant’s registered CENTURYLINK trademarks. The disputed domain names contain minor changes compared to the Complainant’s trademark. These minor changes do not distinguish the disputed domain names from the trademark in question, and are in fact indicative of deliberate typo-squatting.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Respondent is not commonly known by the name CENTURYLINK and was never authorized to use the Complainant’s trademark.
On the uncontradicted evidence, the Panel finds that the Complainant has consistently used the CENTURYLINK trademark since at least as early as June 2, 2009. The Complainant has made use of the CENTURYLINK trademark in North America, Europe and Asia. As a result, the Panel is prepared to accept that the Respondent was likely aware of the Complainant’s CENTURYLINK trademark. There is no evidence on the record to support a finding that the Respondent had any form of right to or legitimate interest in registering or using the disputed domain names.
Furthermore, the Panel finds the Respondent is not using the disputed domain names in a bona fide manner. The use of confusingly similar domain names in association with websites that redirect visitors to competitor websites is not evidence of a bona fide service or offering of goods under the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds, in the absence of any evidence to the contrary, that the disputed domain names were registered and used in bad faith.
Based on the evidence filed, the Panel finds the Respondent was likely aware of the Complainant’s trademark rights in CENTURYLINK when the disputed domain names were registered. The Panel concludes that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark by operating websites that redirect visitors to competitor websites or to websites distributing malicious code. Further, the Panel finds that the Respondent’s effort to conceal its identity supports finding that the Respondent acted in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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 names <centurylinl.com>, <cetnurylink.com>, <cneturylink.com>, and <wcenturylink.com> be transferred to the Complainant.
Christopher J. Pibus
Date: March 17, 2017