The Complainant is CenturyLink Intellectual Property, LLC of Denver, Colorado, United States of America (“United States”), represented by Wiley Rein LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas / Ryan G Foo, PPA Media Services of Santiago, Chile.
The disputed domain names <centurylik.com>, <centuarylink.com> and <centurylinkarena.com> are registered with Internet Domain Service BS Corp (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2016. On July 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 13, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 18, 2016 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 July 21, 2016.
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 July 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2016.
The Center appointed Steven A. Maier as the sole panelist in this matter on August 18, 2016. 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.
The Complainant is a limited liability company registered in Delaware, United States. It is a telecommunications provider offering data, voice and managed services.
The Complainant (or its affiliated entities) is the owner of numerous registrations in a variety of jurisdictions worldwide for the trademark CENTURYLINK. Those registrations include United States trademark number 4,002,609 for CENTURYLINK, registered on July 26, 2011 in Class 38 with a filing date of May 4, 2009.
The disputed domain name <centurylik.com> was registered on December 28, 2009. The disputed domain name <centuarylink.com> was registered on April 30, 2010. The disputed domain name <centurylinkarena.com> was registered on February 5, 2012.
According to evidence exhibited by the Complainant by way of videos of screen activity:
(i) the disputed domain name <centurylik.com> has resolved to various locations including a website promoting the telecommunications corporation AT&T, a “security warning”, and a website at “www.centurylinkportal.com” which appeared to offer links to a variety of Internet and broadband service providers;
(ii) the disputed domain name <centuarylink.com> has resolved to various locations including a “system error warning” suggesting that “suspicious activity” had been detected and providing a toll-free number to call, and to a website at “www1.centuarylink.com” which appeared to offer links to a variety of Internet and broadband service providers;
(iii) the disputed domain name <centurylinkarena.com> has resolved to various locations including a “system error warning” suggesting that “suspicious activity” had been detected and providing a toll-free number to call, to a website promoting the telecommunications corporation Verizon and to a website which appeared to offer links to tickets for sporting and other events.
The Complainant states that it has used the name and mark CENTURYLINK since July 1, 2009. It exhibits a press release from that date announcing the merger of two companies, Century Tel, Inc. and Embarq Corporation, to create a combined company called “CenturyLink” which will serve more than 2.1 million broadband customers, more than 440,000 video subscribers and approximately 7.5 million access lines in 33 US states.
The Complainant states that it is currently the third largest telecommunications company in the United States. It says that as of September 30, 2015 it was serving more than 6 million broadband customers, providing 11.9 million access lines and operating 59 data centers throughout North America, Europe and Asia, all under the CENTURYLINK mark.
The Complainant refers to its trademark portfolio and provides evidence of over 100 active trademark registrations worldwide that comprise or include the mark CENTURYLINK.
The Complainant submits that as a result of its extensive advertising and use of the CENTURYLINK mark in commerce since 2009, that mark has become highly distinctive of the Complainant and its services and has acquired substantial value and goodwill.
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights. It submits that its CENTURYLINK trademark is well known and that each of the disputed domain names incorporates the CENTURYLINK mark in its entirety or differs from it by only one letter. In the case of the disputed domain name <centurylinkarena.com>, the Complainant submits that the addition of the generic term “arena” does not distinguish the disputed domain name from the Complainant’s trademark, and will in fact falsely suggest to Internet users that the Respondent is connected with the Century Link Arena venue in Boise, Idaho, which is sponsored by the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant states that it has not authorized the Respondent to use its CENTURYLINK trademark, that the Respondent is not commonly known by the disputed domain names, and that the Respondent is neither making use of the disputed domain names in connection with a bona fide offering of goods or services or making legitimate noncommercial or fair use of the disputed domain names. On the contrary, the Complainant alleges that the Respondent is using the disputed domain names misleadingly to divert customers looking for the Complainant’s services to websites that contain pay-per-click links, promotion of the Complainant’s competitors and/or sites designed for phishing or the distribution of malware.
The Complainant contends that the disputed domain names have been registered and are being used in bad faith. The Complainant states that in view of the Complainant’s use of its CENTURYLINK trademark since July 2009, the prominence of that mark and the nature of the disputed domain names, it is inconceivable that the Respondent was unaware of the Complainant’s trademark at the time it registered each of the disputed domain names. The Complainant repeats that the Respondent has used the disputed domain names in order to divert Internet users to websites that contain pay-per-view links, promote the Complainant’s competitors or are designed for phishing or the distribution of malware. The Complainant contends in the circumstances that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
The Complainant requests the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Even in a case where the Respondent has not contested the Complaint, it is still necessary for the Complainant to establish that all of the three above elements are present.
The Complainant has established that it is the owner of registered trademark rights in the mark CENTURYLINK. The Panel also finds that the Complainant’s mark CENTURYLINK is widely known by the public in the US and elsewhere in connection with telecommunications services.
The disputed domain names <centurylik.com> and <centuarylink.com> differ from the Complainant’s trademark only by one letter and there is no evidence before the Panel that these names have any independent meaning.
The disputed domain name <centurylinkarena.com> incorporates the whole of the Complainant’s mark CENTURYLINK together with the term “arena” which is a “dictionary” term. The Panel accepts the Complainant’s submission that the addition of this term is not effective to distinguish the disputed domain name from the Complainant’s trademark. Furthermore, the Panel finds that members of the public are likely to be confused by the disputed domain name into believing that it is associated with the Century Link Arena in Boise, Idaho, which is a venue sponsored by the Complainant.
In the circumstances, the Panel finds that the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights.
In the view of the Panel, the Complainant’s submissions referred to above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain names. However, the Respondent has not participated in this administrative proceeding and has not provided any explanation for its registration or its use of the disputed domain names, whether in accordance with any of the criteria set out in paragraph 4(c) of the Policy or otherwise. The Panel having no other evidence of any rights or legitimate interests on the Respondent’s part, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Panel can conceive of no purpose to the Respondent’s registration of the disputed domain names other than to impersonate the Complainant by representing its trademark in the disputed domain names, subject to a single typographical error in two cases and the addition of the term “arena” in the third. The Panel therefore infers that the Respondent registered the disputed domain names with the dishonest intention of misleading Internet users into believing that any website linked to the disputed domain names was owned, operated or authorized by the Complainant. The Panel also finds that the Respondent has used the disputed domain names for the purposes of websites which take unfair advantage of the Complainant’s goodwill by offering pay-per-click links from which the Respondent is likely to benefit commercially, links to websites promoting the Complainant’s competitors and websites that appear to be designed for the purposes of defrauding Internet users. Specifically, the Panel accepts the Complainant’s submission that by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith.
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, <centurylik.com>, <centuarylink.com> and <centurylinkarena.com> be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: August 25, 2016