WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Level 3 Communications, LLC v. Perfect Privacy, LLC / Daniel Lee, Hyun Enterprises, Inc.
Case No. D2020-0959
1. The Parties
The Complainant is Level 3 Communications, LLC, United States of America (“United States”), represented by Wiley Rein LLP, United States..
The Respondent is Perfect Privacy, LLC, United States / Daniel Lee, Hyun Enterprises, Inc., United States.
2. The Domain Name and Registrar
The disputed domain name <level3portal.com> is registered with Register.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2020. On April 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 22, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on April 24, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 27, 2020.
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 the Respondent of the Complaint, and the proceedings commenced on April 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 20, 2020.
The Center appointed Joseph Simone as the sole panelist in this matter on June 2, 2020. 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 has used the name Level 3 Communications, Inc. since 1998, and has been one of the world’s preeminent providers of networked communications services for more than 30 years.
The Complainant was listed on the NASDAQ Stock Exchange under the symbol LVLT on April 1, 1993, and operated one of the first Tier 1 networks (capable of communicating with every other network on the Internet). The Complainant has grown rapidly into a Fortune 500 company, with customers in more than 500 markets in over 60 countries.
The Complainant has an extensive global trademark portfolio of over 400 trademarks, including “LEVEL3” and “Level 3-” in composite form. Its Among its registrations for LEVEL 3 are the following:
- United States of America Trademark Registration No. 3698129 registered on October 20, 2009 in Class 38;
- European Union Trademark Registration No. 008112054 registered on January 1, 2010 in Classes 37, 38 and 41;
- China Trademark Registration No. 1421874 registered on July 14, 2020 in Class 38.
The disputed domain name was registered on October 19, 2019.
At the time of filing of the Complaint, the disputed domain name was used in association with a series of email addresses ending with “@level3portal.com”. The Complainant has alleged that such email addresses were used to impersonate the Complainant’s employees for the purpose of making fraudulent purchases.
5. Parties’ Contentions
According to the Complainant, the purchasing public recognizes that the LEVEL 3 mark is indicative of the origin of the goods and services promoted by the Complainant, and thus, consumers have come to recognize that any marks, words, and/or domain names containing LEVEL 3 mark belong to the Complainant and are indicative of the Complainant as the source of the marks and associated goods and services. The Complainant also asserts that through its long-standing use and promotion in United States and international commerce, the LEVEL 3 mark has acquired great value and goodwill, and is therefore entitled to common law trademark protection.
The Complainant further notes that the disputed domain name registered and used by the Respondent is confusingly similar to the Complainant’s LEVEL 3 mark, in that it incorporates the LEVEL 3 mark in its entirety, and neither the addition of the generic or descriptive term “portal” nor the addition of the generic Top-Level domain (“gTLD”) “.com” alters this conclusion.
The Complainant confirms that it has not authorized the Respondent to use the LEVEL 3 mark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.
On the contrary, the Complainant asserts that the Respondent has registered and used the disputed domain name in bad faith to send emails impersonating the Complainant’s actual employees, complete with the Complainant’s name and trademark, to place fraudulent orders purportedly on behalf of the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to succeed in an administrative proceeding under the Policy:
(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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
A. Identical or Confusingly Similar
The Panel acknowledges that the Complainant has established rights in the trademark LEVEL 3 in many territories around the world.
The disputed domain name incorporates the prominent LEVEL 3 trademark in its entirety with the addition of the term “portal”, commonly used in the IT and communication industries to refer to a single point of access for information. The addition of the term “portal” does not prevent a finding of confusing similarity. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
As such, the disputed domain name is confusingly similar to the Complainant’s LEVEL 3 trademarks.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in the LEVEL 3 trademarks and in showing that the disputed domain name is identical or confusingly similar to its marks.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of producing evidence in support of its rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, paragraph 2.1.
The Complainant has not authorized the Respondent to use its trademark, and there is no evidence to suggest that the Respondent has used, or undertaken any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Rather, it appears that the Respondent has registered and used the disputed domain name in relation to a fraudulent scheme.
In this case, the Complainant has established its prima facie case with sufficient evidence. The Respondent failed to file a response and has therefore failed to assert factors or put forth evidence to establish that it enjoys rights or legitimate interests in the disputed domain name. The Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances in particular, but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the Panel’s assessment, the Respondent plainly was aware of the Complainant’s marks when registering the disputed domain name. In the absence of any explanation from the Respondent, the Panel concludes that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, by creating a likelihood of confusion with the Complainant’s mark with the intent to unlawfully profit therefrom. Furthermore, the use of the disputed domain name to send fraudulent emails impersonating the Complainant supports a finding of bad faith. See section 3.4 of the WIPO Overview 3.0.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondents registered and are using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).
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 <level3portal.com> be transferred to the Complainant.
Date: June 16, 2020