RRLH, Inc. v.
Claim Number: FA0708001053505
Complainant is RRLH, Inc. (“Complainant”), represented by Eric
J. Carsten, of Irell & Manella,
LLP, 1800 Ave. of the Stars,
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <leisureworldresales.com> and <leisureworldrealty.com>, registered with Capitoldomains, LLC, and <leisureworldnews.com> and <lesureworld.com>, registered with Domaindoorman, LLC.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2007.
On August
5, 2007, Capitoldomains, LLC confirmed
by e-mail to the National Arbitration Forum that the <leisureworldresales.com> and <leisureworldrealty.com>
domain names are registered with Capitoldomains,
LLC and that Respondent is the current registrant of the names. Capitoldomains,
LLC has verified that Respondent is bound by the Capitoldomains, LLC 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 13, 2007, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <leisureworldnews.com> and <lesureworld.com> domain names are registered with Domaindoorman, LLC and that Respondent is the current registrant of the names. Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC 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 15, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 4, 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@leisureworldresales.com, postmaster@leisureworldrealty.com, postmaster@leisureworldnews.com, and postmaster@lesureworld.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 11, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <leisureworldresales.com>, <leisureworldrealty.com>, <leisureworldnews.com>, and <lesureworld.com> domain names are confusingly similar to Complainant’s LEISURE WORLD mark.
2. Respondent does not have any rights or legitimate interests in the <leisureworldresales.com>, <leisureworldrealty.com>, <leisureworldnews.com>, and <lesureworld.com> domain names.
3. Respondent registered and used the <leisureworldresales.com>, <leisureworldrealty.com>, <leisureworldnews.com>, and <lesureworld.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RRLH, Inc., is a corporation involved with retirement community development and operation. Complainant has used the LEISURE WORLD mark for over forty years in connection with the provision of housing, social, medical, recreational, hospitalization and religious activities for retired people. Complainant has long held a trademark registration for the LEISURE WORLD mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 809,667 issued June 7, 1966).
Respondent registered the disputed domain names on the following dates: <leisureworldresales.com> on January 11, 2007; <leisureworldrealty.com> on January 27, 2007; <leisureworldnews.com> on December 15, 2006; and <lesureworld.com> on July 5, 2006. Each of the disputed domain names resolve to websites featuring links to third-party websites, some of which are in direct competition with Complainant’s real estate and retirement business.
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, pursuant to Policy ¶ 4(a)(i), Complainant has sufficiently established its rights in
the LEISURE WORLD mark by virtue of its registration of the mark with the
USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18,
2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see
also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb.
Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is
registrable, by so issuing a registration, as indeed was the case here, an
ICANN panel is not empowered to nor should it disturb that determination.”).
Complainant alleges that each of
Respondent’s disputed domain names is confusingly similar to Complainant’s
LEISURE WORLD mark. The Panel agrees, as
the <leisureworldresales.com>, <leisureworldrealty.com> and <leisureworldnews.com> domain
names incorporate the entire LEISURE WORLD mark and merely add the generic
terms “resales,” “realty,” and “news” onto the mark. The
<lesureworld.com> domain name is also confusingly similar to
Complainant’s LEISURE WORLD mark, as it simply omits the letter “i” from the
word LEISURE in the mark. Previous
panels have found, and this Panels so finds, that neither the addition of
generic terms to a mark nor the deletion of letters from a mark negate any
confusing similarity between a mark and a corresponding disputed domain name
under Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also L.L.
Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000)
(finding that combining the generic word “shop” with the complainant’s
registered mark “llbean” does not circumvent the complainant’s rights in the
mark nor avoid the confusing similarity aspect of the ICANN Policy); see also State Farm Mut. Auto. Ins. Co. v. Try Harder &
Furthermore, the addition of the generic top-level domain “.com” to each of the disputed domain names is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is a required element of all domain names. Thus, the Panel finds that the <leisureworldresales.com>, <leisureworldrealty.com>, <leisureworldnews.com>, and <lesureworld.com> domain names are confusingly similar to Complainant’s LEISURE WORLD mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant next alleges that Respondent lacks rights and legitimate interests in the <leisureworldresales.com>, <leisureworldrealty.com>, <leisureworldnews.com>, and <lesureworld.com> domain names. Under Policy ¶ 4(a)(ii), once Complainant has established a prima facie case to prove this allegation, the burden then shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain names. In the instant case, the Panel finds that Complainant has made a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises the presumption that Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). Nevertheless, the Panel will still examine all evidence in the record to determine if Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Respondent’s <leisureworldresales.com>, <leisureworldrealty.com>, <leisureworldnews.com>, and <lesureworld.com> domain names resolve to websites featuring links to third-party websites, some of which are in direct competition with Complainant. The Panel presumes that Respondent earns click-through fees when Internet users click on these links. This does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), which indicates that Respondent lacks rights and legitimate interests in the disputed domain names. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant asserts that Respondent is not commonly known by
the <leisureworldresales.com>,
<leisureworldrealty.com>,
<leisureworldnews.com>, and
<lesureworld.com> domain names, which also indicates a lack of
rights and legitimate interests.
Respondent’s WHOIS information does not indicate, and there is nothing
further in the record to suggest, that Respondent is commonly known by any of
the disputed domain names. Moreover,
Complainant has not authorized Respondent to use its LEISURE WORLD mark for any
purpose. Thus, the Panel finds that
Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <leisureworldresales.com>, <leisureworldrealty.com>, <leisureworldnews.com>, and <lesureworld.com> domain names to redirect Internet users to websites featuring links in direct competition with Complainant. The Panel finds that this constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); 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)).
Furthermore, the Panel presumes that Respondent benefits
commercially when Internet users click on the links displayed on the websites
that resolve from the disputed domain names.
Respondent is thus capitalizing on the likelihood that users, presumably
seeking Complainant’s business, will be confused as to Complainant’s
affiliation with the disputed domain names.
This further indicates that Respondent registered and is using the <leisureworldresales.com>,
<leisureworldrealty.com>,
<leisureworldnews.com>, and
<lesureworld.com> domain names in bad faith pursuant to Policy
¶ 4(b)(iv). See Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”); see also Am. Univ.
v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use
of a domain name that incorporates another's mark with the intent to deceive
Internet users in regard to the source or affiliation of the domain name is
evidence of bad faith.”).
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 <leisureworldresales.com>, <leisureworldrealty.com>, <leisureworldnews.com>, and <lesureworld.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 20, 2007
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