LD Products, Inc. v. Hubert
Herr c/o Unternehmensberatung
Claim Number: FA0809001223933
PARTIES
Complainant is LD Products, Inc., (“Complainant”) represented by Matthew M. Thomson, of Kronenberger
Burgoyne, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <4inkjets.us>, registered with Key-Systems
GmbH d/b/a domaindiscount24.com.
PANEL
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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on September 9,
2008; the Forum received a hard copy of the Complaint on September 10, 2008.
On September 12, 2008, Key-Systems GmbH d/b/a domaindiscount24.com
confirmed by e-mail to the Forum that the <4inkjets.us> domain name is registered with Key-Systems
GmbH d/b/a domaindiscount24.com and that Respondent is the current
registrant of the name. Key-Systems GmbH d/b/a domaindiscount24.com has
verified that Respondent is bound by the Key-Systems
GmbH d/b/a domaindiscount24.com registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On September 18, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 8, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On October 19, 2008, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Louis E. Condon
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <4inkjets.us> domain name is identical to Complainant’s 4INKJETS mark.
2.
Respondent does not have any rights or
legitimate interests in the <4inkjets.us>
domain name.
3.
Respondent registered and used the <4inkjets.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, LD Products, Inc., was founded in 1999 and serves as one of the largest Internet retailers for printer supplies and accessories, distributing a wide range of products, including inkjet cartridges, laser toner cartridges, and refill kits. Complainant owns a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the 4INKJETS mark (Reg. No. 2,998,115 issued Sept. 20, 2005).
Respondent
registered the <4inkjets.us>
domain name on July 14, 2008.
Respondent’s disputed domain name does not currently resolve to an
active website. Respondent did post the <4inkjets.us> domain name for sale
and when Complainant inquired about the price of the domain name, Respondent
offered it for the price of $9,500.00.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 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; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
Complainant has established rights in the 4INKJETS mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See 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.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Respondent’s <4inkjets.us> domain name is identical to Complainant’s 4INKJETS mark. Respondent’s domain name contains Complainant’s mark in its entirety and adds the country-code top-level domain (“TLD”) “.us.” The Panel finds that TLD’s are insignificant when determining whether a domain name is identical to a mark under Policy ¶ 4(a)(i). See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant contends that Respondent lacks any rights to or legitimate
interests in the <4inkjets.us>
domain name. Where Complainant makes a prima facie case under
Policy ¶ 4(a)(ii), as it has in the matter at hand,
the burden shifts to Respondent to set forth evidence that it does possess
rights to or legitimate interests in the disputed domain name. 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, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”).
Complainant contends that the <4inkjets.us> domain name currently resolves to a website
that contains no content. Without evidence of demonstrable preparations
to use the disputed domain name, the Panel finds that Respondent’s use is not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iv). See Flor-Jon Films, Inc. v.
Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that the
respondent’s failure to develop the site demonstrates a lack of legitimate
interest in the domain name); see also AT&T Corp. v. Domains by Brian
Evans, D2000-0790 (WIPO Sept. 27, 2000) (finding no rights or legitimate
interests where the respondent did not provide any documentation on the
existence of its alleged company that might show what the company’s business
was, or how the company’s years of existence, if it ever existed, might mesh
with the complainant’s trademark claims).
Complainant contends that Respondent does not have a corresponding trademark registration in its <4inkjets.us> domain name, is not commonly known by the <4inkjets.us> domain name, or authorized to register domain names featuring Complainant’s 4INKJETS mark in any way. Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in accordance with Policy ¶¶ 4(c)(i) and 4(c)(iii). See 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); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant contends that soon after registration of the <4inkjets.us> domain name, Respondent
offered the domain name for sale.
Respondent’s willingness to part with the disputed domain name is
evidence of a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the
respondent’s willingness to sell a contested domain name for more than its
out-of-pocket costs provided additional evidence that Respondent had no rights
or legitimate interests in the contested domain name); see also Drown Corp. v.
Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13,
2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain
name registration for $100,000 as evidence that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to [UDRP] ¶
4(a)(ii).”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Registration
and Use in Bad Faith
Complainant contends that Respondent tried to sell the <4inkjets.us> domain name to
Complainant for the amount of $9,500.00.
As Respondent has failed to make use of the disputed domain name,
Respondent’s asking price is no doubt beyond the costs of registering and
maintaining the <4inkjets.us>
domain name. As a result, the Panel
finds that Respondent’s conduct is evidence of bad faith registration and use
under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb.
Forum Apr. 25, 2007) (concluding that the respondent registered and was using
the <gwbakeries.mobi> domain name in bad faith according to UDRP ¶
4(b)(i) where it offered it for sale for far more than its estimated
out-of-pocket costs it incurred in initially registering the disputed domain
name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under UDRP ¶ 4(b)(i)).
Finally, Complainant alleges that Respondent registered and
used the disputed domain name in bad faith. The disputed domain name does
not currently resolve to an active website. Respondent presented no
evidence of preparations to use the disputed domain name. For these reasons, the Panel finds that
Respondent registered and used the disputed domain name in bad faith pursuant
to Policy ¶ 4(a)(iii). See Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that merely holding an infringing domain name without active use can constitute
use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb.
Forum Aug. 30, 2000) (finding that the respondent made no use of the domain
name or website that connects with the domain name, and that such lack of use
permits an inference of registration and use in bad faith).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <4inkjets.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 28, 2008
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