Larry Bond v. Wan-Fu China, Ltd.
Claim Number: FA0710001094208
Complainant is Larry Bond (“Complainant”), represented by Harry
Jacobs, of DomainStatute.com,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <larrybond.com>, registered with Capitoldomains, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On October 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 6, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <larrybond.com> domain name is identical to Complainant’s LARRY BOND mark.
2. Respondent does not have any rights or legitimate interests in the <larrybond.com> domain name.
3. Respondent registered and used the <larrybond.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Larry Bond, is a world-renowned fiction book author and game creator. His first book was released in 1985, “Red Storm Rising,” and his first game in 1981, “Harpoon.” Complainant has five books that have been on the New York Times Best Sellers List for at least four-weeks each. Most all of Complainant’s books have featured his name, LARRY BOND, prominently on the front cover. His games have also been extremely popular, and his game “Harpoon” has been the only game to win more than one award for electronic gaming.
domain name was registered on September 9, 2007 and currently resolves to a
website featuring various links to third-party commercial websites, many of
which offer products in competition with those sold under Complainant’s mark. Moreover, numerous similarly-situated UDRP panels
have transferred disputed domain names that were found to be infringing on
third-parties’ trademarks from Respondent.
See, e.g. Treasure Island Media, Inc. v. Wan-Fu China, Ltd., FA 989793 (Nat. Arb. Forum
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.
Complainant need not have registered its mark with a
governmental authority in order to establish rights in it pursuant to Policy ¶
Complainant must simply show that it has continuously used the mark and
established secondary meaning to establish common-law rights. 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
Great Plains Metromall, LLC v.
Creach, FA 97044 (Nat. Arb. Forum
Complainant is a well-known author and game creator, having had five books featured on the New York Times Best Sellers list and won numerous awards for the games that he has created. Complainant has been creating video games and works of fiction since at least 1981 and 1985, respectively. In light of the number of games and books created by Complainant and the number of Complainant’s books that have been featured on the New York Times Best Sellers List, the Panel finds that Complainant has sufficiently established common-law rights in the name LARRY BOND pursuant to Policy ¶ 4(a)(i). See Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (“A person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law …”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights).
Respondent’s <larrybond.com> domain name contains Complainant’s LARRY BOND mark in its entirety and includes the generic top-level domain (“gTLD”) “.com.” It is well established that the inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s LARRY BOND mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant
must first establish a prima facie case
that Respondent has no rights or legitimate interests in the disputed domain
name. See VeriSign Inc. v. VeneSign
Respondent has failed to submit a Response to the Complaint. The Panel presumes that Respondent has no rights or legitimate interests in the <larrybond.com> domain name but will still examine the record in consideration of the factors listed under Policy ¶ 4(c). See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”).
Nowhere in Respondent’s WHOIS information or elsewhere in the record does it indicate that Respondent is or ever was commonly known by the disputed domain name. Further, Complainant has not granted Respondent permission to use the LARRY BOND mark in any way. Absent any evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <larrybond.com> domain name contains Complainant’s mark in its entirety and resolves to a website featuring various links to third-party commercial websites, many of which offer products in competition with those sold under Complainant’s mark. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has previously been ordered by UDRP panels to transfer disputed domain names which were found to be infringing on third parties’ rights to their trademarks.. The Panel finds this establishes a pattern of Respondent’s bad faith registration and use of disputed domain names and is indicative of Respondent’s bad faith in this case as well pursuant to Policy ¶ 4(b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 ((finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Respondent’s <larrybond.com> domain name resolves to a website featuring various hyperlinks to third-parties, many of whom offer products in competition with those sold under Complainant’s LARRY BOND mark. The Panel finds this to establish Respondent’s intent to disrupt Complainant’s business and thus additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also 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).
Lastly, Respondent is presumed to be commercially benefiting from the disputed domain name by each Internet user who clicks on a hyperlink and is diverted to a competitor of Complainant’s. This is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <larrybond.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 20, 2007
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