National Arbitration Forum

 

DECISION

 

LTD Commodities, LLC v. R. Neiwert

Claim Number: FA0709001074737

 

PARTIES

Complainant is LTD Commodities, LLC (“Complainant”), represented by Nora Preece, of Law Office of Alter and Preece, 19 S. LaSalle, Suite 1650, Chicago, IL 60603.  Respondent is R. Neiwert (“Respondent”), represented by John Berryhill, 4 West Front Street, Media, PA 19063.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <ltdcatalog.info>, <distributingcatalog.com>, <distributingcatalog.info>, and <commoditiescatalog.info>, registered with Wild West Domains, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Debrett Gordon Lyons, Hon. Carolyn Marks Johnson and M. Kelly Tillery as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 7, 2007.

 

On September 5, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <ltdcatalog.info>, <distributingcatalog.com>, <distributingcatalog.info>, and <commoditiescatalog.info> domain names are registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the names.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 September 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 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@ltdcatalog.info, postmaster@distributingcatalog.com, postmaster@distributingcatalog.info, and postmaster@commoditiescatalog.info by e-mail.

 

A timely Response was received and determined to be complete on October 4, 2007.

 

A timely Additional Submission was submitted by Complainant and determined to be complete on September 10, 2007.

 

A timely Additional Submission was submitted by Respondent and determined to be complete on September 15, 2007.

 

On October 16, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett Gordon Lyons, Hon. Carolyn Marks Johnson and M. Kelly Tillery as Panelists.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant asserts trademark rights and alleges that the disputed domain names are confusingly similar to the trademarks. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.

 

Complainant alleges that Respondent registered and is using the dispute domain names in bad faith.

 

B. Respondent

 

Respondent broadly denies Complainant’s allegations and challenges the claim that the disputed domain names are confusingly similar to the trademarks.

 

C. Additional Submissions

 

The Panel has read and considered these submissions but for the reasons set out below it does not consider that they touch on the central issue to be decided.

 

 

FINDINGS

 

1.   Complainant is in the business of retail selling of consumer goods promoted entirely by electronic catalog.  It has no physical retail locations.

 

2.   Complainant’s website address is www.ltdcommodities.com.  The Complaint shows that it receives over one million U.S. visitors per month.  A second address referred to in the Complaint, www.abcdistributing.com, is not owned by the Complainant.

 

3.   Complainant asserts ownership of eleven United States Federal trademark registrations but only four are in fact registered to Complainant and the evidence is insufficient to establish a link between Complainant and the remaining registrations.

 

4.   Of those four registrations, two are logo-style trademarks incorporating a prominent device element.

 

5.   The remaining two word marks are LTD COMMODITIES, INC. (Registration No. 2,315,412) and LTD COMMODITIES (Registration No. 2,409,188).

 

 

DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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.

 

Identical and/or Confusingly Similar

 

            Complainant must satisfy a threshold issue that it has rights in a trademark.  The rights can arise from registration (see Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003)) or through use of the trademark in commerce (see SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark)).  

 

The ABC Trademarks

 

Seven of the eleven trademark registrations evidenced by the Complaint are recorded in the name of ABC Distributing, LLC.  Those registrations are all for the trademarks ABC DISTRIBUTING or ABC DISTRIBUTING, INC. in either plain lettering or a slightly stylized font.

 

Complainant states that ABC Distributing, LLC is a wholly owned subsidiary of Complainant but provides no evidence of that claim. It can not even be said that Complainant and ABC Distributing share the same address.  In order for Complainant to claim rights from those registrations it must have proved the corporate relationship, or it must have filed the Complaint jointly in the two company names.  The Panel finds that Complainant’s failure to do so means that those seven registrations must be disregarded.   

 

Accordingly, the disputed domain names <distributingcatalog.com> and <distributingcatalog.info> do not correspond with any trademark in which the Complainant has established registered rights[1].

 

Nevertheless, Complainant asserts that “LTD Commodities and ABC Distributing have enjoyed wide and continual consumer recognition in the catalog industry since as early as 1954 (ABC Distributing) and 1963 (LTD Commodities). LTD Commodities has invested several decades of hard work and millions of advertising dollars in its successful efforts to popularize its registered trademarks.”

 

Use of that kind, if proven, could give Complainant common law or unregistered trademark rights in the ABC Trademarks provided that the evidence also showed sufficient connectivity between those trademarks and Complainant.

 

The Federal registration certificates indicate that the earliest claim to use in commerce of the ABC Trademarks was 1955.  That use would, however, need to be established by evidence. In this case there is none.  The Panel is reminded of what was said in Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003):

 

Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions. 

 

In reaching its decision, a panel can enquire into matters of public record (see Mobile Commc’n Serv. Inc. v. WebReg, RN, D2005-1304 (WIPO Feb. 24, 2006): “[i]t is well accepted that Panels may conduct their own research, including reviewing the parties’ websites (both in the current and past versions) and examining other publicly-available information (such as trademark office records), in connection with rendering decisions in UDRP proceedings.”; see also Tightrope Media Sys Corp. v. DomainCollection.com, D2006-0446 (WIPO June 2, 2006): “[i]t is appropriate for panels to consider publicly available facts even if not offered by a party.”) and this Panel went to the Complainant’s website www.ltdcommodities.com in order to see whether there was detailed information about the ABC Trademarks.  There is nothing on the homepage and the “About LTD” link says nothing of ABC Distributing, LLC.

 

There is nothing to assist this Panel in drawing a conclusion that the Complainant is the owner of common law rights in the ABC Trademarks.  The Panel adds for the sake of completeness, that the trademarks themselves are composed of such inherently non-distinctive terms that in order to support common law rights, the evidence of use and public association of that expression with Complainant would need to have been highly compelling.  The Panel finds no support for the claim to common law rights in the trademarks.

 

 

The LTD Trademarks

 

The domain names <ltdcatalog.info> and <commoditiescatalog.info> can however be compared with the trademarks LTD COMMODITIES, INC. (Registration No. 2,315,412) and LTD COMMODITIES (Registration No. 2,409,188) of which Complainant is the registered proprietor.  Complainant has registered rights in those trademarks and so the Panel moves to the issue of confusing similarity.

 

Complainant argues that <ltdcatalog.info> and <commoditiescatalog.info> are confusingly similar to Complainant’s LTD COMMODITIES, INC. and LTD  COMMODITIES trademarks “because the disputed domain names merely incorporate, in whole or in part, Complainant’s registered trademarks”.

 

Contrary to that claim, neither disputed domain name incorporates the whole of those trademarks.  To the extent that the domain names partly incorporate the trademarks, they do so by containing the element ‘ltd’ or ‘commodities’, terms which Respondent argues are entirely generic.

 

Complainant contends that combining the terms ‘ltd’ or ‘commodities’ with the word ‘catalog’ renders the disputed domain names confusingly similar because Complainant’s business consists of offering merchandise through online catalogs.

 

Complainant points to prior decisions under the Policy where confusing similarity has been held where a domain name has combined a generic term with the complainant’s trademark.  Complainant refers in particular to the decision in American Eagle Outfitters, Inc. & Retail Royalty Co. v. Admin c/o LaPorte Holdings, FA 473826 (Nat. Arb. Forum June 22, 2005) which found the domain <americaneaglestores.com> to be confusingly similar to Complainant's AMERICAN EAGLE OUTFITTERS mark because the added generic term ‘stores’ simply described that complainant's business.

 

The Panel is aware of the numerous times that guiding principle has been applied but observes that it rests on the central requirement that the respondent has taken the whole of complainant’s trademark or at least a distinctive part of it.  The trademark ‘American Eagle’ was wholly misappropriated by the respondent in the American Eagle Outfitters case.  Moreover, it can be appreciated that the words ‘American Eagle’ are arbitrary and per se distinctive when used in relation to men’s clothing.  That can not be said of either of the terms “ltd” or “commodities”.

 

The registrations for the LTD Trademarks carry an endorsement which states that “no claim is made to the exclusive right to use ‘COMMODITIES’ / ‘COMMODITIES INC.’ apart from the mark as shown.”  Disclaimers of that kind are a commonplace feature of the trademark registration systems of many countries (see for example, U.S. Federal, Lanham (Trademark) Act (15 U.S.C.), Art. 1056[2] ).  A statement of that kind has the effect of giving no rights in the words when used on their own, but only when used in combination with the trademark as a whole.

 

Complainant therefore has no exclusive rights in the word ‘commodities’ per se and so one question before this Panel is whether the domain name <commoditiescatalog.info> is confusingly similar to LTD COMMODITIES, INC or LTD COMMODITIES.  In making that comparison it is accepted practice that the gTLD, ‘.info’, is to be ignored (see, for example, 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.”).  Additionally, it has been held that other common designators such as recognized incorporation styles should be disregarded for the purposes of that comparison (see, for example, Steelcase Dev. Corp. v. Manila Industries, Inc., D2006-1378 (WIPO Jan. 20, 2007); British Airways Plc. v. David Moor, D2006-1224 (WIPO Dec. 10, 2006).  The letters ‘Inc.’ fall in this camp.  The comparison is then simply COMMODITIES CATALOG with LTD COMMODITIES.  The Panel has no hesitation in finding that there is no confusing similarity.

 

Likewise, the comparison of <ltdcatalog.info> with LTD COMMODITIES, INC or LTD COMMODITIES reduces to the comparison of LTD CATALOG with LTD COMMODITIES and again in the Panel’s view there is no confusing similarity.

 

For these reasons, the Panel finds that Complainant has failed to satisfy Paragraph 4(a)(i) of the Policy.  Accordingly, there is no cause for the Panel to go on to consider the remaining matters which would otherwise need to be satisfied by Complainant (see Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i))).

 

Rights or Legitimate Interests

 

No finding necessary.

 

Registration and Use in Bad Faith

 

No finding necessary.

 

DECISION

 

Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

Debrett Gordon Lyons,

 

Hon. Carolyn Marks Johnson,

 

 M. Kelly Tillery

 

 

Panelists

Dated:  November 5, 2007