WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Centurylink Intellectual Property, LLC v. Barry Deuschle
Case No. DCO2015-0030
1. The Parties
Complainant is Centurylink Intellectual Property, LLC of Denver, Colorado, United States of America ("United States") represented by Wiley Rein LLP, United States.
Respondent is Barry Deuschle of Naples, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <centurylink.co> (the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2015. On September 11, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 8, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on October 14, 2015. 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 leading provider of telecommunications services in the United States. On June 2, 2009, CenturyTel, Inc. and EMBARQ Corporation announced that their combined companies would begin to trade under the name "CenturyLink", and that they would operate a website located at the URL "www.centurylink.com".
Since July 2009, Complainant has used the mark CENTURYLINK to identify and distinguish its telecommunications services. Complainant has registered the mark CENTURYLINK in the United States (registration issued July 26, 2011) and in numerous other countries.
The Domain Name was registered on July 20, 2010. The Domain Name resolves to a website operated by the cable division of Comcast Cable Communications, a direct competitor of Complainant, "www.xfinity.com".
Complainant sent Respondent a cease-and-desist letter on August 27, 2014. Respondent did not reply.
As set forth in the Complaint and annexes thereto, Respondent has registered a number of other domain names incorporating well-known trademarks, including "www.lexmarkamerica.com", "www.ricohamerica.com", "www.carmaxnaples.com", and "www.axiomaccounting.tax".
5. Parties' Contentions
Complainant asserts that it has satisfied the three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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
There is no dispute that Complainant holds rights in the registered and widely used mark CENTURYLINK. Further, the Panel concludes that the Domain Name is identical to that mark.
The Panel concludes that Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
It is common ground that Complainant has not authorized Respondent to use its CENTURYLINK mark in a domain name. Respondent has not come forward, either in response to Complainant's cease-and-desist letter or in response to the instant Complaint, to identify any legitimate basis upon which he may have registered the Domain Name. No possible legitimate interest can be inferred by the Panel.
The Panel concludes that Complainant has established paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website 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 website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith within the meaning of Policy paragraph 4(a)(ii). The Panel finds it more likely than not that Respondent had Complainant's CENTURYLINK mark in mind when registering the Domain Name. Given the circumstances of this case, that the Domain Name was registered before the CENTURYLINK mark proceeded to registration does not prevent this finding. For example, the fact since 2009 Complainant has used its mark to identify and distinguish its services, the fact that the Domain Name is redirected to the website of a competitor of Complainant, and the fact that Respondent has registered several other domain names incorporating distinctive trademarks, supports this finding.
The Panel is also prepared to find bad faith use because he has pointed the Domain Name to a website where Complainant's direct competitor does business. Although there is nothing in the record to indicate that Respondent derives any profit from this act, such conduct cannot be viewed in any light other than as bad faith. It is either an act of spite or mischief, or it is a prelude to seeking remuneration from Complainant by selling the Domain Name (or at least ceasing to point it to the competitor's website).
The Panel concludes that Complainant has established 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 Domain Name <centurylink.co> be transferred to Complainant.
Robert A. Badgley
Date: October 19, 2015