Lomont Molding, Inc. v.
Claim Number: FA0802001144231
Complainant is Lomont Molding, Inc. (“Complainant”), represented by Timothy
J. Zarley, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lomontmolding.com>, registered with Compana, LLC.
Each of the undersigned Panelists certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum
On February 14, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <lomontmolding.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 17, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 17, 2008.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is an
Complainant relies on its rights as the registered owner of U.S. Trademark Registration No. 3,165,040 LOMONT MOLDING, registered in international class 40, in respect of “custom manufacture of structural foam and injection molded signs.” Complainant submits that it has continuously used said trademark in commerce since its claimed first use on December 31, 1983. Complainant further submits that the domain name in dispute is identical to Complainant’s trademark in sound, sight and appearance.
Complainant submits that Respondent has no rights or legitimate interests in the domain name at issue. Complainant knows of no use by Respondent of the name LOMONT MOLDING other than on the website established at the address of the domain name in dispute.
Complainant submits that Respondent first used
the domain name for its website on
Complainant has exhibited a print out of the website established by Respondent at the website to which the domain name at issue resolves and submits that the content of the website demonstrates that the domain name at issue is being used by Respondent for a commercial purpose.
Complainant submits that Respondent is a known cybesquatter that has shown a pattern of behaviour of continuous attempts to cash in on others’ businesses. In support of this assertion Complainant has submitted a copy of an article published on May 24, 2007 in The Dallas Morning News that Respondent lost twelve domain name disputes through the National Arbitration Forum since April 2, 2007 including one dispute taken by Exxon Mobil Corporation.
Complainant has submitted a sample of cases involving Respondent that it alleges demonstrates a systematic pattern of cybersquatting by Respondent.
In particular Complainant cites Aetna Inc. v. Compana L.L.C., FA 330494, (Nat. Arb. Forum, Nov. 20, 2004), in which, notwithstanding the affidavit filed by the respondent, the majority decision refused to accept the respondent’s averment that it had no knowledge of the complaint’s rights because of the respondent’s knowledge in acquiring domain names, its utilization of same and its experiences in domain name disputes.
Complainant submits that as found in
Finally, Complainant submits that as a final indication of bad faith by Respondent, Complainant attempted in good faith to contact the President of Respondent concerning this dispute but received no response.
Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the Policy but rather an offer of “unilateral consent to transfer” as prior panels have deemed it.
Respondent cites Cartoon Network LP, LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006) where in similar circumstances the panel noted that it could proceed in the following ways:
(i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, D2000-0207 (WIPO May 8, 2000); see also Slumberland France v. Chadia Acohuri, D2000-0195 (WIPO June 14, 2000));
(ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corp. v. Qosmedix Group, D2003-0620 (WIPO Nov. 10, 2003); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Jan. 19, 2001)); and
(iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (see Koninklijke Philips Electronics N.V. v. Manageware, D2001-0796 (WIPO Oct. 15, 2001)) or because there is some reason to doubt the genuineness of the Respondent’s consent (see Société Française du Radiotéléphone-SFR v. Karen, D2004-0386 (WIPO July 22, 2004); see also Eurobet UK Ltd. v. Grand Slam Co, D2003-0745 (WIPO Dec. 17, 2003)).
Respondent noted that in Cartoon Network LP, LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006) the panel, conscious of Rule 10(c)’s caution for “due expedition” decided that the best and most expeditious course was that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course.” (citing from Williams-Sonoma, Inc. v. EZ-Port, D2000-0207 (WIPO May 5, 2000)).
Complainant is an
2. Complainant is the registered owner of U.S. Trademark Registration No. 3,165,040 LOMONT MOLDING, registered in international class 40, in respect of “custom manufacture of structural foam and injection molded signs” and has continuously used said trademark in commerce since its claimed first use on December 31, 1983.
3. Respondent is engaged in the business of registering domain names and hosting web sites and has engaged in a pattern of registering and using domain names that are identical or confusingly similar to trademarks owned by third parties in which Respondent has no rights.
4. The registration of the domain name <lomontmolding.com> by Respondent is part of that pattern and Respondent registered and is using said domain name as the address of a website in order to take unauthorised and predatory advantage of Complainant’s goodwill in the trademark LOMONT MOLDING.
5. The domain name <lomontmolding.com> is identical to the trademark LOMONT MOLDING in which Complainant has rights.
6. Respondent has no rights or legitimate interest in said domain name.
7. Respondent has registered and is using said domain name in bad faith.
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.
This Panel has considered Respondent’s submissions and noted that Respondent is consenting to the transfer of the domain name at issue to Complainant. This Panel has also considered in particular the submissions made by Respondent in relation to how it should proceed and notes the comments of the learned panel in Cartoon Network LP, LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006).
Having given the matter due consideration, this Panel is of the view that it should proceed to consider Complainant’s application on its merits.
This Panel accepts Complainant’s submission that the domain name at issue <lomontmolding.com> is identical to the trademark LOMONT MOLDING in which Complainant has rights.
Complaiant has therefore satisfied the first element of the test in paragraph 4(a) of the Policy.
Rights or Legitimate Interests
Complainant’s allegations as to rights or
legitimate interests are sufficient to shift the burden of production to
Respondent, although Complainant ultimately bears the burden of proof on this
and all other elements required by the Policy.
See, e.g., Royal
Bank of Scot. Group plc v.
Respondent has neither responded to Complainant’s allegations in this regard nor come forward with any evidence of rights or legitimate interests.
In the circumstances this Panel is satisfied
that Complainant has met its burden of proof in establishing the second element of the test in paragraph
4(a) of the Policy also. See Int’l Lutheran Laymen's League v.
Complainant has provided evidence that Respondent has used the domain name in dispute as the address of a website established by Respondent for commercial purposes. Complainant has also demonstrated that Respondent has engaged in a pattern of activity whereby it has engaged in cybersquatting by registering and using domain names that are identical or confusingly similar to third party trademarks to take predatory advantage of the third parties’ rights for commercial purposes.
On the balance of probabilities, given the unique combination of the two elements “lomont” and “molding” in both the trademark and the domain name at issue, it is clear that Respondent was actually aware of Complainant’s trademark rights when the domain name was chosen and used by Respondent as a domain name and website address. Respondent clearly chose and registered the domain name <lomontmolding.com> in order to take unauthorised, predatory advantage of the goodwill that Complainant has established in its LOMONT MOLDING trademark.
This Panel is therefore satisfied that Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and it follows that Respondent registered and is using said domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lomontmolding.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: April 3, 2008
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