Lauth Group Inc. v. MGA Enterprises Limited
Claim Number: FA0712001124267
Complainant is Lauth Group Inc. (“Complainant”), represented by Bradley
M Stohry, of ICE MILLER LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lauthpropertygroup.com>, registered with Godaddy.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On December 24, 2007, Godaddy.com confirmed by e-mail to the National Arbitration Forum that the <lauthpropertygroup.com> domain name is registered with Godaddy.com and that Respondent is the current registrant of the name. Godaddy.com has verified that Respondent is bound by the Godaddy.com 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 January 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 22, 2008 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@lauthpropertygroup.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lauthpropertygroup.com> domain name is confusingly similar to Complainant’s LAUTH mark.
2. Respondent does not have any rights or legitimate interests in the <lauthpropertygroup.com> domain name.
3. Respondent registered and used the <lauthpropertygroup.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Lauth Group, Inc., is a well-known real estate company offering a range of products and services including real estate leasing, brokerage, management, construction, repair, and development services. Complainant owns two registrations for the LAUTH mark with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 3,238,742 and Reg. No. 3,292,714 both issued May 8, 2007 upon applications filed September 15, 2006).
Respondent registered the <lauthpropertygroup.com> domain name on November 21, 2005. Respondent’s disputed domain name resolves to a website containing links to 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.
Through registration with the USPTO, Complainant has
established rights in the LAUTH mark pursuant to Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under
Respondent registered the <lauthpropertygroup.com>
domain name
before Complainant filed its trademark application for the LAUTH mark. However, Complainant asserts that it has been
using the LAUTH mark in connection with its real estate goods and services
continuously since 2002. Complainant
also contends that significant sums were expended in advertising and promoting
the good will of the LAUTH mark since its first use in commerce in 2002. The Panel holds that registration of a
trademark is unnecessary under Policy ¶ 4(a)(i), provided Complainant can
establish common law rights in its mark through evidence of continuous and
extensive use of the mark. See
Complainant asserts that
Respondent’s <lauthpropertygroup.com>
domain name
is confusingly similar to Complainant’s LAUTH mark. Respondent’s domain name contains
Complainant’s mark, adds generic terms relating to Complainant’s business and
adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a domain name which
contains a complainant’s mark and adds generic terms associated with a
complainant’s business is confusingly similar pursuant to Policy ¶
4(a)(i). See Brown & Bigelow, Inc. v. Rodela, FA 96466
(Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain
name is confusingly similar to the complainant’s HOYLE mark, and that the
addition of “casino,” a generic word describing the type of business in which
the complainant is engaged, does not take the disputed domain name out of the
realm of confusing similarity); see also
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business). In addition,
the Panel holds that the addition of a gTLD is irrelevant when distinguishing a
disputed domain name from a mark. 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.”). Therefore, the Panel finds the <lauthpropertygroup.com> domain name confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <lauthpropertygroup.com> domain name. When Complainant makes a prima facie case in support of its allegations, the burden is shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel chooses to examine the evidence for applicable Policy ¶ 4(c) elements before making a final determination with regards to Respondent’s rights and legitimate interests.
Complainant contends that Respondent is neither commonly
known by the <lauthpropertygroup.com> domain name nor licensed to
register domain names using the LAUTH mark.
Respondent’s WHOIS information lacks any defining characteristics
relating it to the disputed domain name.
Therefore, the Panel finds that without affirmative evidence of being
commonly known by the <lauthpropertygroup.com> domain name,
Respondent is not commonly known by the disputed domain name 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 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.”).
Complainant contends that Respondent is using the <lauthpropertygroup.com> domain name in order to attract Internet users to the associated website containing various links to real estate services in direct competition with Complainant. The Panel finds that intentionally diverting Internet users to a competing website by using a domain name which is confusingly similar to a complainant’s mark is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <lauthpropertygroup.com> domain name to directly compete with Complainant is evidence of bad faith. The Panel finds that a registered domian name used primarily to disrupt the business prospects of a competitor is a demonstration of 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).
Respondent’s use of the <lauthpropertygroup.com>
domain name
in order to intentionally attract Internet users to its website by creating a
strong possiblity of confusion with Complainant’s LAUTH mark and offering third-party
links to competing websites. The Panel
infers that Respondent receives click-through fees for diverting Internet users
to such websites. Therefore, pursuant to
Policy ¶ 4(b)(iv), the Panel finds such use of the disputed domain name
constitutes bad faith registration and use.
See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see also 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).”).
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 <lauthpropertygroup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 6, 2008
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