The Complainant is Qualtrics, LLC, United States of America (“United States”), represented internally.
The Respondents are WhoisGuard, Inc., Panama / Dolores Faccio, United States, Andrew Peterson, United States, Edward Thiele, United States.
The disputed domain names <qualtricsinc.com>, <qualtricsmr.com>, and <qualtricsmrinc.com> are registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On October 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on October 3, 2019, providing the registrant and contact information for multiple underlying registrants disclosed by the Registrar, and inviting the Complainant to either amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control; and/or, to file a separate complaint for any domain names for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate which domain names will no longer be included in the current Complaint. The Complainant filed an amended Complaint on October 3, 2019, including comments on the consolidation.
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 Respondents of the Complaint, and the proceedings commenced on October 9, 2019. The Center also notified to the Parties the prima facie consolidation of the Respondents. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 30, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on November 8, 2019. 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 provides software as a service and has offices in countries around the world. It has used the trademark QUALTRICS since February 18, 2005, and has registered that mark in 43 countries, including the United States (Registration No. 3530045, registered on November 11, 2008). All three disputed domain names were registered within days of one another in July and August 2019. The Respondents have used the disputed domain names to establish three identical websites, each of which redirect users to activities that directly compete with the Complainant’s primary business activity.
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondents did not reply to the Complainant’s contentions.
There are three named Respondents (three underlying registrants disclosed by the Registrar)– one for each of the disputed domain names. The Complainant requests that all three be consolidated into this matter. Consolidation is proper, so the Complainant’s request for consolidation is granted.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents and provides that where a complaint is filed against multiple respondents, panels consider whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties.
The record indicates the disputed domain names are under common control. All three disputed domain names were registered relatively closely together in time. All three disputed domain names contain the word "qualtrics” and have pointed to websites that are identical, with the same home page, headings, and content under each heading. Each of the web pages had the same logo in the top left corner (containing the Complainant’s word mark QUALTRICS), and the “Contact Us” section of each website listed the same two physical addresses. Consolidation would be fair and equitable to all parties for the sake of efficiency it brings to the proceedings. The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable. Accordingly, conditions for proper consolidation of the three disputed domain names into one matter are present here.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
All three of these elements have been met in this case.
The incorporation of a trademark in its entirety is sufficient to establish that a disputed domain name is identical or confusingly similar to the Complainant’s registered mark. See, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain names contain the Complainant’s trademark QUALTRICS in its entirety. The addition of the Top-Level Domain (“TLD”) “.com” to the disputed domain names and the other letters within the second-level domain does not avoid confusing similarity.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of the registered mark QUALTRICS as noted above.
Accordingly, the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights and has prevailed on this first element of the Policy.
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondents lack rights or legitimate interests in the disputed domain names, and if that prima facie showing remains unrebutted by the Respondents. The Complainant asserts, among other things, that the Respondents are not commonly known by the disputed domain names, and the Respondents do not use the disputed domain names in connection with a bona fide offering of goods or services (i.e. using the disputed domain names to redirect Internet users to websites that promote competing services). These assertions establish the Complainant’s prima facie case. The Respondents have not addressed these matters raised by the Complainant, and, there being no other basis in the record to overcome the Complainant’s prima facie showing, the Complainant has satisfied this second Policy element.
The Policy provides that bad faith registration and use of a disputed domain name may be shown when a respondent uses a disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of a product or service on that website. The Panel finds that in this case, the registration and use of the mark within disputed domain names and on websites that promoted services competitive to the Complainant’s were done 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 <qualtricsinc.com>, <qualtricsmr.com> and <qualtricsmrinc.com> be transferred to the Complainant.
Evan D. Brown
Date: November 22, 2019
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