theguesswho.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Guess Who v. QTK Internet/Name Proxy, James M. van Johns

Case No. D2007-0081

1. The Parties

The Complainant is The Guess Who, c/o Garry Peterson and James Kale, of Winnipeg, Manitoba, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.

The Respondents are QTK Internet/Name Proxy, c/o Damien Macafee, of London, United Kingdom of Great Britain and Northern Ireland, and James M. van Johns of Turtle Creek, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <theguesswho.com> is registered with The Planet Internet Services Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2007. On January 23, 2007, the Center transmitted by email to The Planet Internet Services Inc. a request for registrar verification in connection with the domain name at issue. On January 30, 2007, The Planet Internet Services Inc. transmitted by email to the Center its verification response providing James M. van Johns as the registrant and providing the contact details for said registrant. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 13, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2007. In accordance with the Rules, Paragraph 5(a), the due date for Response was March 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2007.

The Center appointed Alistair Payne as the sole panelist in this matter on March 22, 2007. 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, The Guess Who, is a musical group from Manitoba, Canada. The Complainant is the owner of the trademark THE GUESS WHO, which is registered in Canada and the United States (“THE GUESS WHO Mark”). The THE GUESS WHO Mark was registered in the United States on January 1, 1987 and in Canada on March 20, 1998.

The Respondents registered the Disputed Domain Name on August 10, 2000.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the Respondent QTK Internet is identical to or at least affiliated with van Johns and Damien Macafee and that one or more of these entities is the Registrant of the Disputed Domain Name.

The Complainant submits that, due to its enduring popularity and the number of consumers who have been exposed to the THE GUESS WHO Mark over the years, its trademark has become a famous mark and should be accorded the appropriate protection by the Panel.

The Complainant asserts that the Respondent uses the Disputed Domain Name to divert Internet users seeking information about the Complainant to an inactive holding site.

On August 4, 2006, the Complainant sent a cease and desist letter to the Respondent QTK Internet (c/o of Damien Macafee), to which it has received no response.

The Complainant submits that there is tangible evidence that the Respondent has taken steps to conceal its identity and that the technical and administrative contact, Damien Macafee, is in fact the registrant or affiliated with the registrant. The Complainant asserts that the Respondent van Johns, identified by the Registrar as the Registrant, attempted to shield his identity as Registrant by causing QTK Internet to be listed as the owner on the WHOIS information. The email address provided for van Johns ([e-mail address]@qtk.com) indicates that he has a continuing link with QTK Internet. QTK Internet’s address is identical to that provided by Damien Macafee. There are no links or available websites in the name of QTK Internet and it is not possible to identify the legal entity conducting business under QTK Internet. Damien Macafee is the only person or entity who can be positively identified with the Respondent’s business. The same connection between QTK Internet, Damien Macafee and James “Saz” van Johns has been found to exist in prior Panel decisions.

The Complainant asserts that Damien Macafee and his affiliated business QTK Internet are cyber squatters who have been involved in at least 10 proceedings under the Policy, many of which have resulted in the transfer of the disputed domain names to the complainant.

The Complainant asserts that the Registrant registered the Disputed Domain Name in spite of the Complainant’s pre-existing registered rights in the THE GUESS WHO Mark in the United States. Moreover, because the THE GUESS WHO Mark is a coined, unusual and famous mark, the Complainant submits that the Respondent must have known about the Complainant’s mark when the Disputed Domain Name was registered. The Complainant further submits that the registration and continued use of the Disputed Domain Name was based upon the Respondent’s intent to trade upon the goodwill in the Complainant’s mark.

According to the Complainant, the Disputed Domain Name is identical to the Complainant’s registered and unregistered trademarks. The Complainant has made extensive use of the THE GUESS WHO Mark in North America and internationally. In this respect, the Complainant refers to numerous Panel decisions which have held that the likelihood of confusion is increased when the trademark is famous or well-known. The THE GUESS WHO Mark is, in the Complainant’s view, clearly a famous trademark and consumers would undoubtedly associate the Disputed Domain Name with the Complainant.

The Complainant submits that it is clear that the Respondents do not have any trademark or intellectual property rights or other legitimate interest in the Disputed Domain Name. The Complainant has never licensed or authorized either of the Respondents to use the THE GUESS WHO Mark, which was registered at least 12 years before the Disputed Domain Name was registered. Given the fanciful nature of the THE GUESS WHO Mark, its registration in Canada and the United States, and its extensive use worldwide, the Respondents cannot possibly show that prior to notice of this dispute, there was a bona fide offering of goods or services or a legitimate non-commercial or fair use of the Disputed Domain Name pursuant to the Policy. The Respondent’s failure to respond to the Complainant supports the inference that it has no right or legitimate interest in the THE GUESS WHO Mark.

The Complainant asserts that the Respondent registered the Disputed Domain Name in order to prevent the Complainant from reflecting its mark in a corresponding domain name. The Complainant submits that since Damien Macafee and van Johns are affiliated with, and are in fact the only actual persons identified with the Respondent QTK Internet, their previous bad faith conduct is sufficient to demonstrate bad faith registration and use in this case. The Complainant further submits that Damien Macafee’s previous history of trading in domain names can contribute to a finding of bad faith even where Macafee is not listed as the owner of the Disputed Domain Name.

The website resolving to the Disputed Domain Name is essentially inactive and only indicates that the domain name has been reserved. The Complainant contends that such inactivity constitutes bad faith use.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent has not filed a Response to the Complaint. Pursuant to Paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent.

Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainant, if it is to succeed in this Administrative Proceeding, to prove each of the three elements referred to in Paragraph 4(a) of the Policy, namely that:

(i) the Disputed 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 in respect of the domain name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

Before considering Paragraph 4(a) of the Policy, the Panel must consider the issue of the Respondent’s identity. The Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. Therefore, a complaint may only be made under the Policy against the holder of a domain name registration. The Complaint was originally initiated against QTK Internet/Name Proxy c/o Damien Macafee. However, in response to a notification by the Center that the Complaint was administratively deficient, the Complainant added James M. van Johns as a Respondent to the Complaint.

According to the Verification provided by the Registrar, the Planet Internet Services Inc., on January 30, 2007, James M. van Johns is the Registrant in respect of the Disputed Domain Name. A WHOIS search carried out on December 20, 2006, and attached to the Complaint as Exhibit 1, indicates that, at that date, QTK Internet/ Name Proxy was the Registrant. Damien Macafee is not named in the WHOIS search report as the administrative and technical contact, however the email address d_mcafee@[e-mail address] is provided in respect of both, and the Panel accepts that, on the balance of probabilities, it is likely that this email belongs to Damien Macafee. A further WHOIS search, carried out on February 22, 2007, on the Registrar’s website, shows QTK Internet/Name Proxy as the Registrant.

Van Johns’ email address, [e-mail address]@qtk.com, suggests that he is linked to QTK Internet. The Panel has been referred to previous Panel decisions involving QTK Internet, Damien Macafee and James van Johns, for example, Saz Marketing AG v. James “Saz” Van Johns,WIPO Case No. D2005-0781. The Panel also notes with interest the decisions in Best Western Hospitality Inc. v. QTK Internet,FA0209000124994 and Hilton Hospitality Inc. v. QTK Internet,FA0304000154181 (both cited in Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail Limited v. QTK Internet/Name Proxy,WIPO Case No. D2004-0496). Both cases related to domain name registrations by QTK Internet of Turtle Creek, Pennsylvania, the United States of America, the address provided by James M. van Johns in respect of the Disputed Domain Name.

The Panel notes that the Complainant’s counsel sent a “cease and desist” letter to QTK Internet on August 4, 2006, to which it has received no response. The Panel considers that, given the confusion that has been created as to the identity of the Respondent, it is likely that Registrant has taken steps to conceal its identity.

The Panel notes that the Verification provided by the Registrar indicated James M. van Johns as the Registrant of the Disputed Domain Name. However, the notification by the Center that the Complaint was administratively deficient informed the Complainant, in error, that John M. van Johns was the Registrant and the Complainant accordingly amended the Complaint to include John  M. van Johns as Respondent. The Panel therefore accepts that any reference in the Complaint to John M. van Johns should be read as referring to James M. van Johns.

On the basis of the foregoing, the Panel accepts the Complainant’s submission that QTK Internet is identical to, or at least affiliated with, James van Johns and Damien Macafee, and that one or more of these entities is the Registrant of the Disputed Domain Name.

The Panel will, therefore, proceed to establish whether the Complainant has discharged the burden of proof in respect of each of the three elements referred to in Paragraph 4(a) of the Policy. The Panel also notes that pursuant to Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a Response from the Respondent.

A. Identical or Confusingly Similar

There are two separate elements that the Complainant must prove under Paragraph 4(a)(i) of the Policy: first, that the Complainant has rights in a trademark or service mark and second, that the Disputed Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights.

The Complainant has established that it is the proprietor of the THE GUESS WHO Mark, registered in Canada. The Panel notes that James Kale is the proprietor of the United States mark THE GUESS WHO. However, the Complainant has given no indication as to whether the United States mark has been licensed to the partnership trading as The Guess Who.

In any event, the Disputed Domain Name is clearly identical to the THE GUESS WHO Mark registered in Canada.

Accordingly, the Panel finds that the Complaint fulfills Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The burden of proof rests with the Complainant to establish at least a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and it is then for the Respondent to rebut this assertion.

The Panel accepts that there is no relationship between the Respondents and the Complainant. The Respondents are not licensees of the Complainant nor have they otherwise obtained any authorisation to use the THE GUESS WHO Mark or otherwise obtained consent to apply for any mark which incorporates “The Guess Who”.

In the Panel’s view, there is no evidence to suggest that the Respondents have any rights or legitimate interests in the Disputed Domain Name. The Respondents have never used the Disputed Domain Name for a bona fide offering of goods or services nor is there any indication of an intention to do so. Furthermore, the website to which the Disputed Domain Name resolves is not in use. In the absence of a Response to the Complaint, the Panel finds that the Respondents have no right or legitimate interest in the Disputed Domain Name.

Therefore, the Panel finds that the Complaint fulfills Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and subsequent use of the Disputed Domain Name in bad faith. The Panel notes that the Complainant need only prove one of the four grounds set out in Paragraph 4(b) of the Policy, in order to succeed in demonstrating that the Respondent has registered the Disputed Domain Name in bad faith.

Under Paragraph 4(b)(ii) of the Policy, evidence that the Respondents have 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 shall be evidence of the registration and use of a domain name in bad faith, provided that the Respondents have engaged in a pattern of such conduct.

The Panel is prepared to infer that the Respondents registered the Disputed Domain Name in order to prevent the Complainant from reflecting the mark in a corresponding domain name.

Based on the evidence, it appears likely that the band, The Guess Who, and therefore the THE GUESS WHO Mark, is extremely well-known in North America, if not internationally. At least one of the Respondents, van Johns, has an address in the United States and is therefore likely to have heard of the Complainant.

The Panel notes that the Disputed Domain Name resolves to a place-keeper site in circumstances where no response has been filed by the Respondents. There is no indication of the Respondents’ intended use of the website or bona fide interest in the Disputed Domain Name. In this regard, the Panel notes the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in which the panel concluded that the respondent’s passive holding of the domain name satisfied the requirement of Paragraph 4(a)(iii) that the domain name is being used in bad faith by the respondent. Also see JVC America v. Damien Mcafee,ICANN Case No. CPR007 –001031, in this respect where the panel reached the same conclusion.

The Panel notes that, based on the evidence, both named Respondents, QTK Internet and James van Johns, have been involved in previous proceedings under the Policy, as has Damien Macafee. See for example, Saz Marketing AG v. James “Saz” van Johns,WIPO Case No. D2004-0781; Media West-GSI, Inc, and Gannett Satellite Information Network, Inc. v. Damien Macafee, WIPO Case No. D2000-1032; Polaroid Corp. v. Macafee, FA 96660; JVC Americas Corp. v. Damien Macafee, ICANN Case No. CPR007-001031; Radisson Hotels International, Inc. v. Damien Macafee, FA0603000652870; Archer Daniels Midland Company v. Damien Macafee, WIPO Case No. D2003-0198; Mamas & Papas v. QTK Internet/Name Proxy, WIPO Case No. D2004-0498; Oxford v. Damien Macafee, WIPO Case No. D2001-0975. The Panel considers that this constitutes a pattern of behaviour for the purposes of Paragraph 4(b)(ii) of the Policy.

On the basis of the foregoing, the Panel concludes that the Complaint fulfills Paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <theguesswho.com>, be transferred to the Complainant.

Alistair Payne
Sole Panelist

Dated: April 5, 2007