WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Clasen Quality Chocolate, Inc. v. Earthlink, Inc.

Case No. D2017-0129

1. The Parties

Complainant is Clasen Quality Chocolate, Inc. of Madison, Wisconsin, United States of America ("United States"), represented by Reinhart Boerner Van Deuren s.c., United States.

Respondent is Earthlink, Inc. of Atlanta, Georgia, United States, represented by Troutman Sanders, LLP, United States.

2. The Domain Name and Registrar

The disputed domain name <cqc.com> (the "Domain Name") is registered with CSC Corporate Domains, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 23, 2017. On January 24, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On January 25, 2017, the Registrar transmitted by e-mail 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 January 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2017. The Response was filed with the Center on February 20, 2017.

The Center appointed Robert A. Badgley as the sole panelist in this matter on February 24, 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

Complainant is based in Wisconsin in the United States. It is a manufacturer and seller of "a wide range of confectionary coating products, chocolate filling products and solid chocolate products." Complainant owns a registered trademark for CQC, registered with the United States Patent & Trademark Office ("USPTO") on December 27, 2016. The USPTO registration indicates that Complainant first used the CQC mark in commerce in 2005.

According to Complainant, it has "invested a substantial amount of money and effort in advertising and promoting its website ["www.clasen.us"] under the CQC trademark." No evidence is annexed to the Complaint to substantiate this claim. Complainant also alleges that it has "achieved a significant degree of consumer goodwill, recognition, and reputation in these trademarks." Again, nothing in the record substantiates this claim.

Respondent, founded in 1994, describes itself as "a leading network services provider dedicated to delivering superior customer experiences in a cloud-connected world." According to Respondent, it and its affiliates "help thousands of businesses and residential customers securely establish critical connections in the cloud, keeping them online, out-front, and informed."

The Domain Name was first registered in 1997 by a company called ComQuest, referred to by Respondent as its "predecessor in interest." ComQuest used the Domain Name to identify its Internet and e-mail services. By 2003, ComQuest's operations had been subsumed into those of an entity called LINC Internet Holdings, LLC ("LINC"). In August 2008, LINC agreed to sell some of its dial-up Internet service provider business to Respondent, including the Domain Name and other domain names and assets. The actual transfer of the Domain Name to Respondent occurred in October 2008.

In September 2016, Complainant reached out to Respondent about acquiring the Domain Name. On September 20, 2016, Respondent sent Complainant an e-mail, stating in substance as follows:

"After my research, I have found that we do not currently have customers using cqc.com. So with that said, we are open to an offer for the domain. As I promised yesterday, I will be direct with you. We have not done any domain deals in the past for less than $100k, but I am willing to consider any reasonable offer."

On September 23, 2016, Complainant sent an e-mail indicating that it was thinking of an offer in the area of USD 10,000. On November 18, 2016, Complainant's counsel sent Respondent an e-mail asserting its trademark rights in CQC and asserting that Respondent "indicated that it would not sell the domain name for less than $100,000." Complainant's counsel asserted that Respondent was not using the Domain name for any legitimate purpose, and threatened to file a complaint with the Center if Respondent did not transfer the Domain Name in exchange for USD 1,500.

On December 4, 2016, Respondent sent an e-mail to Complainant's counsel, stating:

"EarthLink is not making any use of the domain that would constitute trademark infringement. EarthLink acquired the domain name, along with many other domain names, in connection with its purchase of certain Internet access service subscribers. So, there is no bad faith. We will defend an action taken against EarthLink.

As [a representative of Respondent involved in the September 2016 e-mail exchanges between the Parties] suggested, we are willing to consider a reasonable offer for the domain name."

This Complaint followed.

5. Parties' Contentions

A. Complainant

Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.

B. Respondent

Respondent denies that it registered or has used the Domain Name in bad faith. Respondent argues that it acquired the Domain Name as part of a legitimate business acquisition, and has never put the Domain Name to a use that infringes Complainant's trademark rights to CQC in the area of chocolates and confectionary products. Respondent denies having had any knowledge of Complainant or its CQC mark when acquiring the Domain Name, and points out that prior to December 2016 Respondent had no registered trademark at all. Respondent also notes that many entities use the CQC trademark in various areas of commerce, and the renown of Complainant's mark is questionable. For example, Respondent asserts that a Google search of "CQC" does not yield a single reference to Complainant for the first ten pages of results.

Respondent asks the Panel to find Complainant culpable of Reverse Domain Name Hijacking.

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

The Panel concludes that Complainant has rights, through registration and use, in the mark CQC. The Domain Name is identical to that mark.

Complainant has established Policy paragraph 4(a)(i).

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.

In view of the Panel's conclusion regarding "bad faith" in the next section, it is unnecessary for the Panel to address the "rights or legitimate interests" issue.

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 cannot conclude from this record that Complainant has satisfied its burden of proving that the Domain Name was registered and used in bad faith. There is no evidence in the record to support the claim that Respondent was aware of and targeted Complainant's CQC mark when it acquired the Domain Name in 2008. As Respondent notes, numerous entities use the CQC mark to identify and distinguish their goods and services, and Complainant has done nothing to demonstrate that Respondent could have been aware of, let alone targeting the then‑unregistered CQC mark when acquiring the Domain Name – along with a number of other domain names – as part of a business acquisition in 2008.

Complainant has not established Policy paragraph 4(a)(iii).

D. Reverse Domain Name Hijacking

In this Panel's opinion, this Complaint should not have been brought, at least not without evidence to suggest even the inference that Complainant had any reason to know about the common law trademark rights of a chocolate maker halfway across the United States when it acquired the Domain Name. The Panel also notes that Complainant mischaracterized the e-mail exchange between the Parties in September 2016, when Complainant wrongly asserts that Respondent refused to accept an offer less than USD 100,000. That assertion is at odds with Respondent's actual statements, as well as the repeated comment that Respondent was willing to entertain a reasonable offer. The Panel will refrain from finding Reverse Domain Name Hijacking in this instance because this Complaint appears, on balance, to be more misconceived than malicious in nature.

7. Decision

For the foregoing reasons, the Complaint is denied. No finding of Reverse Domain Name Hijacking is made.

Robert A. Badgley
Sole Panelist
Date: March 1, 2017