LTD Commodities, LLC v. Silmaril Ltd.
Claim Number: FA0707001045829
Complainant is LTD Commodities, LLC (“Complainant”), represented by Nora
A. Preece, of Law Offices of Alter and Preece, 19 S.
LaSalle, Suite 1650, Chicago, IL 60603.
Respondent is Silmaril Ltd (“Respondent”), Kirmizi Toprak Mah Nargul Sitesi D Blok D6,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2007.
On July 31, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 28, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@abcdistributiong.com, postmaster@abcdistrributing.com, postmaster@abcdistriburting.com and postmaster@abcdistriubting.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names are confusingly similar to Complainant’s ABC DISTRIBUTING mark.
2. Respondent does not have any rights or legitimate interests in the <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names.
3. Respondent registered and used the <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LTD Commodities, LLC, markets and distributes a catalog by and through ABC Distributing, LLC. This catalog has been marketed since at least 1997. Additionally, Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its various marks, including one for the ABC DISTRIBUTING mark (Reg. No. 2,887,254 issued September 21, 2004, filed December 23, 2002). Complainant also operates a website at the <abcdistributing.com> domain name.
Respondent registered the <abcdistributiong.com> domain name on February 27, 2004, the <abcdistrributing.com> domain name on March 11, 2004, the <abcdistriburting.com> domain name on March 3, 2004 and the <abcdistriubting.com> domain name on April 11, 2004. Respondent’s disputed domain names resolve to websites that display hyperlinks to various third-party websites, some of which are in direct competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s registration of the ABC DISTRIBUTING mark with the USPTO adequately conveys rights in the mark to Complainant for the purposes of Policy ¶ 4(a)(i). See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14, 2005) (“Complainant has established rights in the BAKERS SQUARE mark by registering it with the United States Patent and Trademark Office (“USPTO”).”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Moreover, as Complainant’s trademark registration for the ABC DISTRIBUTING mark was successfully approved by the USPTO, the Panel holds that Complainant’s rights in the mark date back to Complainant’s filing of the application with the USPTO, which in the instant case is December 23, 2002. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).
Respondent’s <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names are all confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) as each disputed domain name contains a misspelled version of Complainant’s ABC DISTRIBUTING mark, along with the generic top-level domain (“gTLD”) “.com.” Actions such as misspelling a mark and adding a gTLD do not adequately distinguish the disputed domain names from Complainant’s mark under the parameters of Policy ¶ 4(a)(i). See Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under the requirements of Policy ¶ 4(a)(ii), Complainant must establish a prima facie case that Respondent lacks rights and legitimate interests in the <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names. If Complainant is able to successfully meet this burden, the burden then shifts to Respondent to present evidence of its rights or legitimate interests in each of the disputed domain names. See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has successfully met this burden, and thus, the burden of proof has shifted to Respondent to demonstrate rights under Policy ¶ 4(c).
An examination of the evidence indicates that there is nothing present to indicate that Respondent is commonly known by any of the disputed domain names, as the WHOIS information identifies Respondent as “Silmaril Ltd.,” and there is nothing to indicate Complainant has authorized Respondent to use its ABC DISTRIBUTING mark. Thus, the Panel finds that Respondent is not commonly known by the <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent is using the disputed domain names to display websites that advertise the websites of various other third-parties, some of which offer goods and services in direct competition with Complainant. Such use is presumably for Respondent’s commercial gain through the earning of click-through fees. In Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006), the panel found that the respondent’s use of a domain name that was confusingly similar to the complainant’s mark to display links to the complainant’s competitors did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Therefore, the Panel finds that Respondent’s use of the <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names is presumably for Respondent’s own commercial gain through the accrual of click-through fees. Moreover, as all of the disputed domain names are misspelled versions of Complainant’s mark, they are capable of creating a likelihood of confusion as to Complainant’s source, sponsorship, endorsement and affiliation with the disputed domain names and corresponding websites. The Panel finds that Respondent has consequently demonstrated bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
Finally, as Respondent’s disputed domain names redirect Internet
users to websites where hyperlinks to some of Complainant’s competitors are
displayed, the Panel finds that Respondent has shown bad faith registration and
use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business through
Respondent’s use of the <abcdistributiong.com>, <abcdistrributing.com>,
<abcdistriburting.com> and <abcdistriubting.com>
domain names. See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000)
(finding that the respondent registered and used the domain name <eebay.com>
in bad faith where the respondent has used the domain name to promote competing
auction sites); see also Puckett,
Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the
respondent has diverted business from the complainant to a competitor’s website
in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <abcdistributiong.com>, <abcdistrributing.com>, <abcdistriburting.com> and <abcdistriubting.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 19, 2007
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