Claim Number: FA0711001109767
Complainant is The Los Angeles Police Revolver and Athletic Club,
Inc. (“Complainant”), represented by Tawnya R. Wojciechowski, 19900
MacArthur Boulevard, Suite 1150, Irvine, CA 92612-8433. Respondent is Eric Peterson d/b/a Precinct
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lapdstore.com>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 16, 2007.
On November 16, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lapdstore.com> domain name is 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 November 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 17, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant was established in 1930 as a police officer training facility for the Los Angeles Police Department (“LAPD”).
Complainant has used the LAPD mark to offer high quality police clothing, accessories, novelty goods, and other services to members of the LAPD.
Complainant holds a registered trademark with the United States Patent and Trademark Office (“USPTO”) for the LAPD mark (Reg. No. 3,047,180, filed August 27, 1999, issued January 24, 2006).
Respondent does not hold any trademark registrations for the LAPD mark, and is not licensed or authorized to use the mark.
Respondent registered the <lapdstore.com> domain name on February 24, 2000.
Respondent uses the disputed domain name to offer for sale products competing with the business of Complainant.
Respondent’s <lapdstore.com> domain name is confusingly similar to Complainant’s LAPD mark.
Respondent does not have any rights to or legitimate interests in the <lapdstore.com> domain name.
Respondent registered and uses the <lapdstore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant alleges rights to the LAPD mark through its USPTO trademark registration. Such registration confers rights in the mark on Complainant dating from the registration filing date pursuant to Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Malain, FA 705262 (Nat. Arb. Forum June 19, 2006): “Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy ¶ 4(a)(i).” See also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of a complainant’s trademark rights date from the application’s filing date).
Respondent’s <lapdstore.com> domain name contains Complainant’s LAPD mark in its entirety, and merely adds the generic word “store” as well as the generic top-level domain (“gTLD”) “.com.” These additions do not sufficiently distinguish the disputed domain name from Complainant’s mark. Therefore, Respondent’s <lapdstore.com> domain name is confusingly similar to Complainant’s LAPD mark pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with a complainant’s registered mark “llbean” does not circumvent that complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”, so that Policy ¶ 4(a)(i) is satisfied); further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <lapdstore.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.
See also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights or legitimate interests in a domain name).
From the allegations of the Complaint, we conclude that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). And because Respondent has not responded to the Complaint, nothing further is required. Nonetheless, we will examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
In this connection, we first observe that Complainant contends, and Respondent does not deny, that Respondent does not hold any trademark registrations for the LAPD mark, and is not licensed or authorized to use the mark. There is also no evidence before us to suggest that Respondent holds a trademark registration for “LAPD Store.” Moreover, the pertinent WHOIS information does not indicate that Respondent is commonly known by the disputed domain name. Therefore, we conclude that Respondent is not commonly known by the <lapdstore.com> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and a complainant had not authorized that respondent to register a domain name containing its registered mark).
We also note that there is no dispute that Respondent is using the <lapdstore.com> domain name to offer goods that compete with Complainant’s business. Respondent presumably profits from the unauthorized use of Complainant’s LAPD mark, and, therefore, is not using the <lapdstore.com> domain name in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See 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.” See also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002): “Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <lapdstore.com>
domain name creates a likelihood of confusion among Internet users searching
for Complainant’s products. These users
are likely to be confused as to the source, sponsorship, affiliation, or
endorsement of the competing products advertised on Respondent’s website resolving
from the disputed domain name.
Respondent clearly attempts to profit from this venture through its
offering of these competing goods.
Therefore, we conclude that Respondent registered and is using the <lapdstore.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007)
(finding that a respondent registered and used a disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because
that respondent gained commercially from the likelihood of confusion between a
complainant’s AIM mark and the competing instant messaging products and
services advertised on that respondent’s website, which resolved from the
disputed domain name); see
also Asbury Auto. Group,
In addition, it appears that Respondent registered the <lapdstore.com> domain name with at least constructive knowledge of Complainant’s rights in the LAPD trademark by virtue of Complainant’s filing for registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <lapdstore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 29, 2007
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