Quixtar Investments, Inc.
v.
Scott A. Smithberger and QUIXTAR-1BO

[Indexed as: Quixtar v. Scott Smithberger and QUIXTAR-IBO]
[Indexed as: quixtar-sign-up.com]

WIPO Arbitration and Meditation Center
Administrative Panel Decision

Case No. WIPO D2000-0138
Commenced: 14 March 2000
Judgement: 19 April 2000

Presiding Panelist: David H. Bernstein

Domain name - Domain name dispute resolution policy - Pending U.S. trademark applications - Applications outside U.S. - Successful e-commerce site - Practice - Jurisdiction - Third party - Identical - Confusingly similar - No legitimate interest - Bad faith registration - Bad faith use.

Complainant has filed intent to use applications for five trademarks bearing the name “Quixtar”. The “Quixtar” mark is in use in the Complainant’s website, “quixtar.com”. The website has been quite successful. Respondent registered the domain name “quixtar-sign-up.com”. Complainant alleges he Respondent “QUIXTAR-IBO” is the same as Scott Smithberger. Respondent has never been a Quixtar IBO. Complainant alleges that its marks, which are either approved or pending approval, are identical and confusingly similar to the registered domain name and the Respondent, registered the domain name in bad faith.

Scott Smithberger is not the registrant of the domain name “quixtar-sign-up.com and thus has not entered into any contract and in which he personally agreed to arbitrate a dispute over the domain name. The Panel lacks jurisdiction over Mr. Smithberger and dismisses the claims against him. The dismissal has no practical effect since the party that is the registrant of the domain name, QUIXTAR-IBO, is properly before the panel.

Held, Name transferred to Complainant

Complainant must establish both bad registration and bad faith use

The Respondent’s domain name, “quixtar-sign-up.com” incorporates in its entirety this distinctive mark and is confusingly similar to the mark “Quixtar”. The Respondent has no has no legitimate interest or rights in respect of the mark. The Respondent was neither a Quixtar IBO nor was he authorized to sign up others as QUIXTAR IBO’s. This is bad faith registration.

Respondent offered the domain name in question for sale to the public. The offer is evidence of the Respondent’s attempt to profit from the Complainant’s mark. This is bad faith use.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Cases referred to

EAuto, LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Enters., Inc., Case No. D2000-0047 (WIPO Mar. 24, 2000), § 5(1)

Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000), § d

1. The Parties
The complainant is Quixtar Investments, Inc. ("Quixtar"), a Michigan corporation with its principal place of business in Ada, Michigan. The respondents as identified in the Complaint are Scott Smithberger, an individual with an address at 100 North Street, #318, Columbus, Ohio, and QUIXTAR-IBO, an unincorporated entity with its principal place of business at the same address,100 North Street, Apt. 318, Columbus, Ohio.

2. Procedural History
The Complainant initiated this proceeding by filing a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 7, 2000. On March 9, 2000, the Center received a hard copy of the Complaint. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center sent Respondents notice of the commencement of this proceeding on March 14, 2000. Although the Center’s email notification was returned as "undeliverable," Swiss Post has confirmed that a copy of the notice and Complaint was delivered by courier to a person at Respondents’ address on March 20, 2000.

Respondents did not submit any response by the April 3, 2000 deadline. Accordingly, on April 5, 2000, the Center notified Respondents (again by Swiss Post, which has confirmed delivery) that they were in default. On April 6, 2000, the Center appointed David H. Bernstein as the sole panelist in this matter. The parties have not filed any additional submissions.

3. Factual Background
The following facts, taken from the Complaint and publicly available documents on the Internet, are not disputed:

In January 1999, Quixtar, Inc. (Complainant’s predecessor in interest) filed an intent to use application with the United States Patent and Trademark Office ("USPTO") to register the mark QUIXTAR for "sales of computer and commercial goods and services over an electronic computer network; providing business opportunities in the field of consumer and commercial goods and services, and promotion and advertising of business opportunities; rendering assistance to others in connection with the establishment and operation of businesses; facilitating business networking over an electronic computer network." In March and May, 1999, Quixtar, Inc. filed a dozen additional intent to use applications with the USPTO to register the marks QUIXTAR, QUIXTAR and Design, QUIXTAR.COM and QUIXTAR.COM and Design for a variety of goods and services. By April 1999, Quixtar, Inc. also had filed several applications outside of the United States to register the QUIXTAR mark and variations thereof. In September 1999, Quixtar, Inc. assigned the marks and pending applications to Complainant.

Quixtar, Inc. officially announced the launch of the quixtar.com site on March 3, 1999. The website is, essentially, a shopping mall on the Internet, and includes partnerships with such lending retailers as IBM, MCI Worldcom, Office Max and Toys "R" Us. Quixtar, Inc. uses a business model developed by its affiliate, Amway Corporation ("Amway"), which pioneered the use of Independent Business Owners ("IBO"). The QUIXTAR mark currently is in use at the Complainant’s website, www.quixtar.com.

Quixtar.com has been quite successful, as evidenced by its performance during the 1999 holiday season when it averaged 15-20 million hits a day and was one of the top five e-commerce sites in the world based on revenue. The site’s success has been noted by the media. By August of 1999 (when Respondent QUIXTAR- IBO registered the domain name at issue), more than 300 articles concerning Quixtar had been published in American publications.

On August 5, 1999, Respondent QUIXTAR-IBO registered the Domain Name quixtar-sign-up.com with NSI. In the application, Respondent QUIXTAR-IBO provided the following ownership and contact information:

Registrant: QUIXTAR-IBO
Address: 100 North St., Apt. 318
Columbus OH 43202
Administrative Contact: QUIXTAR-IBO
telephone number: 614-268-9662
email: no valid email

Although the name Scott Smithberger appears nowhere in the NSI registration application, Complainant performed a reverse-lookup on the telephone number and determined that Scott A. Smithberger is listed at that telephone number and at the address provided in the registration application. Additionally, until recently, the web page at www.quixtar-sign-up.com displayed a single page which listed the address and telephone number as found in the NSI registration information, but also provided the name "Scott" above the telephone number with the email address ssmithy@columbus.rr.com. The only other information on the web page was the simple statement, "This name is for sale."

On August 27, 1999, Smithberger became an Amway IBO, a distributor of Amway products through an independently operated business pursuant to an agreement with Amway. This is not the same as becoming a Quixtar IBO, and Smithberger has never been a Quixtar IBO. Smithberger’s relationship with Amway ended on December 31, 1999 when Smithberger failed to renew his IBO membership.

After initiation of the instant proceeding, QUIXTAR-IBO replaced the web page with a blank page indicating only that the website is under construction.

4. Jurisdiction

Before reaching the merits, the Panel first must determine whether the Respondents have agreed to the jurisdiction of this Panel and properly have been notified of the proceeding.

Respondent QUIXTAR-IBO, in its registration agreement with NSI, expressly agreed to the terms of the Uniform Domain Name Dispute Resolution Policy (the "Policy"). Under the Policy, a domain name registrant - here, QUIXTAR-IBO - is required to submit to the jurisdiction of a properly appointed Panel and to comply with the Rules in the event of a dispute between the registrant and any third party over the registration and use of the domain name quixtar-sign.up.com. Because this Panel properly was constituted, and because QUIXTAR-IBO properly was notified of the commencement of this proceeding and given an opportunity to respond to the Complaint, the Panel concludes that QUIXTAR-IBO properly is before this Panel and subject to its jurisdiction.

The same is not true of Mr. Smithberger. Although Complainant has submitted persuasive evidence that there is no such entity as QUIXTAR-IBO and that it is a mere alter ego of Mr. Smithberger, as a technical matter, Mr. Smithberger is not, personally, the registrant of this domain name and thus has not entered into any contract or other agreement in which he personally agreed to arbitrate a dispute over the domain name quixtar-sign-up.com pursuant to the Policy. The Panel thus concludes that it lacks jurisdiction over Mr. Smithberger and hereby dismisses the claims against him. This dismissal has no practical effect, though, because the party that is the registrant of this domain name, QUIXTAR-IBO, is properly before this Panel, and thus this Panel is empowered to order any appropriate relief as permitted by the Policy.

5. Discussion
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") have been satisfied:

i. the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests with respect to the disputed domain name; and

iii. the domain name has been registered and is being used in bad faith.

1. Similarity of the Mark and Domain Name.

Complainant has satisfied the first factor. Complainant has submitted evidence showing that it owns the mark QUIXTAR and that the mark, which is a fanciful word, already has established substantial renown in the short period of time in which it actively has been used in commerce. Because the domain name incorporates in its entirety this distinctive mark, the Panel finds that the domain name quixtar-sign-up.com is confusingly similar to the mark QUIXTAR. See EAuto, LLC v. Triple S. Auto Parts d/b/a Kung Fu Yea Enters., Inc., Case No. D2000-0047 (WIPO Mar. 24, 2000), § 5(1).

2. Respondent Has No Legitimate Interest in the Domain Name.

Because Respondent QUIXTAR-IBO has failed to submit a response, the Panel accepts as true all allegations alleged in the complaint. See Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000), § d. Moreover, the Panel may draw any inferences it believes are appropriate given Respondent’s failure to comply with the Rules. Id.

Given that the QUIXTAR mark is distinctive, the only arguable basis for a claim that the domain name reflects a legitimate interest would be if Respondent could show that it has prior rights in the QUIXTAR name, was somehow affiliated with Quixtar, or had the ability to help sign up Quixtar IBO’s. No such evidence appears in this record. To the contrary, the record demonstrates that Respondent is not and never has been associated with Quixtar. The Panel thus finds that Respondent lacks any legitimate basis for the registration of this domain name.

3. Respondent Registered and Used the Domain Name in Bad Faith. 

Complainant has shown that Mr. Smithberger is the person behind the registration of this domain name, but that he registered it under the pseudonym QUIXTAR-IBO. Not only is there no such entity as QUIXTAR-IBO, but, in fact, that name itself is false because it suggests an affiliation with the trademark owner (Quixtar) that does not exist. Respondent was neither a Quixtar IBO (as its name stated) nor an entity authorized to sign up others as Quixtar IBO’s (as the domain name implied). The use of false registration details like these constitutes bad faith.
Respondent has also used the domain name in bad faith by offering it for sale to the general public via the Internet. The offer did not indicate that the seller sought only to recover its registration costs, and thus provides independent evidence of Respondent’s bad faith attempt to profit from Complainant’s mark.

6. Decision
For all of the foregoing reasons, the Panel finds that the domain name quixtar-sign-up.com is confusingly similar to Complainant’s trademark QUIXTAR, that Respondent QUIXTAR-IBO has no rights or legitimate interests in respect of the domain name, and that the Complainant has adequately demonstrated that Respondent QUIXTAR-IBO registered and used the domain name in bad faith. Accordingly, the Panel orders that the registration of the domain name quixtar-sign-up.com be transferred to the Complainant.

David H. Bernstein
Presiding Panelist
April 19, 2000

Held, Domain Name transferred to Complainant