WIPO Arbitration and Mediation Center

On April 3, 2000, the WIPO Arbitration and Mediation Center received from Complainant Quixtar Investments, Inc. ("Quixtar") a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.

Respondent, Dennis Hoffman, failed to respond to the complaint and a "Notification of Respondent’s Default," dated May 15, 2000, was forwarded by WIPO to Respondent.

Quixtar offers high-quality products and services that registered Internet clients can order from the QUIXTAR.COM web site, in a manner akin to an Internet shopping mall. This web site was publicly announced on March 3, 1999, and was launched on September 1, 1999. Quixtar, itself or through a related company, has extensively marketed and promoted the QUIXTAR mark and the QUIXTAR business has been the subject of extensive media coverage, in both national and local publications.

THE QUIXTAR.COM web site is one of the most popular web sites on the Internet. For example, during the 1999 holiday season, QUIXTAR was one of the top five e-commerce web sites in the world based on revenue and was averaging 15-20 million hits a day. In its first 200 days of existence, Quixtar totaled more than $250 million in sales.

Complainant filed an intent-to-use application to register the mark QUIXTAR, for various business services performed over the Internet, with the U.S. Patent and Trademark Office (USPTO) on January 28, 1999. Complainant also applied to register the mark QUIXTAR and Design and QUIXTAR.COM and Design with the USPTO on March 16, 1999. Thereafter, Quixtar filed applications to register the QUIXTAR mark with the USPTO on or in connection with a wide variety of goods and services. All of the above-referenced applications owned by Quixtar are still pending before the USPTO. Quixtar also filed trademark applications for the mark QUIXTAR and variations thereof in approximately 68 other countries, with registrations issued to date in Costa Rica, Denmark, the Dominican Republic, France, Germany, the Netherlands Antilles, and Switzerland.

Respondent Dennis Hoffman registered the domain name in dispute, QUIXTARMORTGAGE.COM, on August 4, 1999. The evidence (see Exhibit 7) indicates that Hoffman is a principal in Millenium Financial Group Inc, of Minneapolis, Minnesota. Millenium Financial Group is the registrant of the domain name EZMORTGAGENETWORK.COM. Exhibit 9, consisting of a printout from the EZMORTGAGENETWORK.COM web site, reveals that this site closely mirrors the QUIXTARMORTGAGE.COM web site. See Exhibit 6 for printout of the QUIXTARMORTGAGE.COM web site.

Based upon my review of all the evidence, it is my opinion that Complainant has proven each of the elements set forth in Paragraph 4(a) of the Policy. The domain name in issue -- QUIXTARMORTGAGE.COM -- is legally identical to Complainant’s mark, QUIXTAR. The addition of the generic terms "MORTGAGE" and ".COM" to the domain name in dispute has little, if any, affect on a determination of legal identity between the domain name and the mark.

The evidence also establishes that Complainant, through the filing of its intent-to-use trademark application on January 28, 1999, and its March 1999 promotional activities, has "rights" in the QUIXTAR mark. These activities predate Respondent's registration of the domain name in dispute.

Further, Respondent has not established any rights or legitimate interest in respect of the domain name under any of the circumstances set forth in Paragraph 4(c) of the Policy. While the evidence supports a finding that Respondent, before any notice of the instant dispute, used the domain name in issue, in my opinion, the circumstances surrounding such use was not "in connection with a bona fide offering of goods or services." (italics added) Rather, it appears, based on the available evidence, that Respondent was merely attempting to trade on the good will associated with Complainant's QUIXTAR mark. My determination on this issue is supported by the following uncontroverted evidence and assertions: (1) the fact that the QUIXTARMORTGAGE.COM web site is virtually identical to the EZMORTGAGENETWORK.COM site; and (2) the statement from a Florida representative for Respondent's Quixtar Mortgage that the owner of Quixtar Mortgage adopted the "Quixtar Mortgage" name for the purpose of free riding on the fame and goodwill of the QUIXTAR mark. (See ¶31 of Arbitration Complaint)

Finally, I find that Respondent's registration and use of the domain name in dispute meets the bad faith element set forth in Section 4(b)(iv) of the Policy. Specifically, Hoffman uses the domain name to intentionally attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Quixtar's mark as to the source, sponsorship, affiliation and endorsement of Hoffman's web site and of the services offered at the site.

In view of the above, it is ordered that the domain name "quixtarmortgage.com" be transferred from Respondent to Complainant.

Jeffrey M. Samuels
Panelist

Dated: May 29, 2000