Claim Number: FA0801001140777
Complainant is
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <libertyleaguetruth.com>, registered with Godaddy.com, Inc.
Each of 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.
Hon. Tyrus R. Atkinson, Jr., Esq., Joel M. Grossman, Esq., and Terry F. Peppard, Esq., chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 29, 2008.
On January 29, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <libertyleaguetruth.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 February 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 27, 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@libertyleaguetruth.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 11, 2008, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Tyrus R. Atkinson, Jr., Esq., Joel M. Grossman, Esq., and Terry F. Peppard, Esq., chair, as Panelists.
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:
Since its establishment in June of 2001, Complainant has
continuously marketed goods and services, including educational materials and
educational services, in the fields of personal development, self-help and
business development.
Complainant’s domain name, <libertyleague.com> was
registered on April 14, 2000.
Complainant owns a family of trademarks that are well
established and famous within the online industry, including LIBERTY LEAGUE
INTERNATIONAL, registered with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,836,342, issued April 4, 2004), and the
common law mark LIBERTY LEAGUE, used in conjunction with the domain name
<libertyleague.com>.
Complainant has not granted to Respondent a license or other
permission to use its marks.
Respondent registered
the disputed domain name on
November 10, 2005.
Respondent is not commonly known by the <libertyleaguetruth.com>
domain name.
Respondent uses the <libertyleaguetruth.com> domain name
to host a website that purports to be a complaint website directed against
Complainant, but which actually advertises Respondent’s business in competition
with Complainant’s business, and, in so doing, ultimately directs Internet
users to Respondent’s commercial website.
This it does by posting on its website an invitation to
Internet users to send an e-mail message to a designated address, then
responding to such messages with advertising materials, delivered via e-mail and
targeted at those seeking “a substantial amount of cash from home”, together
with a further invitation to visit a web site located at the address <overnightcashsystem.com>.
Respondent’s domain name is confusingly similar to Complainant’s LIBERTY LEAGUE INTERNATIONAL and LIBERTY LEAGUE marks.
Respondent does not have any rights to or legitimate interests in the domain name <libertyleaguetruth.com>.
Respondent had knowledge of Complainant’s LIBERTY LEAGUE INTERNATIONAL and LIBERTY LEAGUE marks when it registered the disputed domain name.
Respondent registered and uses the <libertyleaguetruth.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.
Our inquiry under this head begins with the question whether
Complainant has rights in a mark within the contemplation of the Policy. Complainant
asserts rights in the LIBERTY LEAGUE INTERNATIONAL mark through registration of
the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,836,342, issued April 27, 2004). This
registration, which predates the registration of the disputed domain
name on November 10, 2005, sufficiently vests rights in Complainant for
purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v.
Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also Microsoft
Corp. v. Burkes, FA
652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in
the MICROSOFT mark through registration of the mark with the USPTO.”
We next address the
question of confusing similarity as between the mark and the domain name. In our view, the <libertyleaguetruth.com>
domain name is confusingly similar to Complainant’s LIBERTY LEAGUE
INTERNATIONAL mark under Policy ¶ 4(a)(i), as alleged, inasmuch as the disputed
domain name contains the dominant portion of Complainant’s mark, along with the
mere addition of the generic word “truth” and the generic top-level domain
“.com.” These additions do not
sufficiently distinguish the disputed domain name from Complainant’s mark for purposes
of Policy ¶ 4(a)(i).
See Amer. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s
<amextravel.com> domain name confusingly similar to a complainant’s AMEX
mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the addition of a gTLD, whether “.com,” “.net,” “.biz,” or
“.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis).
We find, therefore, that Complainant has adequately met the evidentiary requirements of Policy ¶ 4(a)(i).
On the point of Respondent’s possible rights to or interests in its domain name, once Complainant makes out a prima facie case in support of its allegations that Respondent lacks rights to or interests in the domain, the burden shifts to Respondent to show that it nonetheless has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that 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, in appropriate circumstances, the assertion by a complainant that a respondent has no rights or legitimate interests in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or interest exists).
On the record before us, we are satisfied that Complainant
has made out a prima facie case for
its position under Policy ¶ 4(a)(ii). Respondent, for its part, has failed to
respond to the Complaint. We are therefore
free to conclude, without more, that Respondent has no rights to or interests
in the disputed domain name under the Policy. 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.” However, we will nonetheless inspect the record
to determine if there is any basis for concluding that Respondent has rights to
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c).
In this connection, we note that
Respondent’s WHOIS information identifies Respondent as “Joe Jack.” Additionally, Complainant asserts, and
Respondent does not deny, that Respondent is not authorized to use
Complainant's mark, and that Respondent is not
commonly known by the <libertyleaguetruth.com> domain
name. On this record, we conclude that
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb.
Forum July 17, 2006) (concluding that a respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that that
respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding that a respondent has no rights to or legitimate interests in
a disputed domain name where there is no evidence in the record indicating that
that respondent is commonly known by the disputed domain name).
Moreover, Complainant contends
that Respondent uses the <libertyleaguetruth.com> domain name
to host a website that purports to be a complaint website aimed at Complainant,
but is actually a website which advertises Respondent’s business in competition
with Complainant’s, and which, in the manner outlined in the Complaint, directs
Internet users to Respondent’s commercial website located at the domain name <overnightcashsystem.com>. Respondent does not deny any aspect of these
allegations. We therefore conclude that
such use is neither a bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wal-Mart Stores,
Inc. v. Power of Choice Holding Co.,
FA 621292 (Nat. Arb.
Forum Feb. 16, 2006) (finding that a respondent’s use of domain names
confusingly similar to a complainant’s WAL-MART mark to divert Internet users
seeking that complainant’s goods and services to websites competing with the business
of that complainant did not constitute 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)); 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.”
We thus find that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
From the facts of record, we
have no difficulty in determining that Respondent registered and is using the <libertyleaguetruth.com>
domain name to gain commercially by promoting its competing services. We likewise readily conclude that the
disputed domain name is capable of creating confusion as to the possibility
that Complainant is the source, sponsor, affiliate or endorser of the disputed
domain name or resulting website. All of
this is evidence that Respondent registered and is using the disputed domain
name in bad faith within the terms of Policy ¶ 4(b)(iv). See, for example, Dell Inc. v. Innervision Web Solutions, FA 445601
(Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶
4(b)(iv) where a respondent used a domain name to divert Internet users to that
respondent’s website offering competing computer products and services); see also
Access Res. Servs., Inc. v.
Individual, FA 97750 (Nat. Arb. Forum Aug. 13, 2001): “Respondent's registration and use of the
<misscleosucks.com> domain name to promote competing psychic services,
assumedly for commercial gain, by creating a likelihood of confusion with
Complainant’s mark is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”
In addition, Complainant contends that the content of the
website that resolves from the <libertyleaguetruth.com> domain name
indicates that Respondent had knowledge of Complainant’s LIBERTY LEAGUE
INTERNATIONAL and LIBERTY LEAGUE marks when it registered the disputed domain
name. Once again, Respondent does not
deny this assertion. We therefore conclude
that this foreknowledge is further evidence of bad faith registration and use of
the disputed domain name under Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA
105890 (Nat. Arb. Forum May 31, 2002): “Respondent is using the domain name at
issue to resolve to a website at which Complainant’s trademarks and logos are prominently
displayed. Respondent has done this with
full knowledge of Complainant’s business and trademarks. The Panel finds that
this conduct is that which is prohibited by Paragraph 4(b)(iv)
of the Policy. See also Yahoo!
Inc. v.
We also note in passing that it is conceivable that
Respondent might have attempted to defend its registration and use of the
disputed domain name on the basis that it is a complaint site. However, a website which purports to function
as a complaint site does not escape scrutiny under Policy ¶ 4(a)(iii) where, as here, it also operates that site as a
commercial competitor of a mark holder. See
Wal-Mart Stores, Inc. v. Walsucks,
D2000-0477 (WIPO July 20, 2000) (finding bad faith where a respondent
intentionally used <walmartcanadasucks.com>,
<wal-martcanadasucks.com>, <walmartuksucks.com>, <walmartpuertorico.com>
and <walmartpuertoricosucks.com> domain names to attract Internet users
to its websites). See also Diners Club Int’l,
Ltd. v. Infotechnics
Ltd., FA 169085 (Nat.
Arb. Forum Aug. 20, 2003): “Respondent may have the right to post
criticism of Complainant on the Internet, however, Respondent does not have the
right to completely appropriate Complainant’s registered trademark in a domain
name in a way that will mislead Internet users as to the source or affiliation
of the attached website.” Further
see Wal-Mart Stores, Inc. v. Richard
MacLeod d/b/a For
For all of these reasons, we find that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(iii).
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 <libertyleaguetruth.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Esq., Panelist (Chair)
Dated: March 24, 2008
Honorable Tyrus R. Atkinson, Panelist
Dated: March 24, 2008
Joel M.Grossman, Esq., Panelist
Dated: March 24, 2008
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