LM&B Catalog, Inc. v.
RealTimeInternet.com
Claim Number: FA0208000123895
PARTIES
Complainant
is LM&B Catalog, Inc., Tucson,
AZ (“Complainant”) represented by Devin
Odell, of Brown and Bain. Respondent is RealTimeInternet.com, Fort Wayne, IN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lewmagram.com>,
registered with Dotster.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 27, 2002; the Forum received a hard copy of the
Complaint on August 30, 2002.
On
August 29, 2002, Dotster confirmed by e-mail to the Forum that the domain name <lewmagram.com> is registered
with Dotster and that Respondent is the current registrant of the name. Dotster verified that Respondent is bound by
the Dotster 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
September 3, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 23, 2002, 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@lewmagram.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 15, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 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 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 makes the following
allegations:
The
<lewmagram.com>
domain name is identical to Complainant's LEW MAGRAM mark. Respondent has no rights or legitimate
interests in the disputed domain name. Respondent registered and used the
disputed domain name in bad faith.
B.
Respondent failed to submit a Response.
FINDINGS
Complainant registered its LEW MAGRAM
mark with the United States Patent and Trademark Office in 1989 as Registration
Number 1,554,789. Complainant has used
the mark for more than fifty years in relation to its mail order catalog
services. Complainant has mailed more
than 34 million catalogs and has spent more than $19 million in promotional
costs since 2000, and as a result of its efforts, Complainant has received more
than 500,000 orders. In 2002,
Complainant will mail more than 11 million catalogs, and expects to receive
180,000 orders.
Respondent registered the disputed domain
name on December 28, 2001. Respondent
uses the disputed domain name to divert Internet users to a web page with links
to numerous sites on the Internet, including websites that directly compete
with Complainant’s services. Respondent
has registered numerous domain names that infringe on the rights of others,
including <brownstonestudio.com>, another domain name that is identical
to another mark held by this same Complainant.
Complainant’s investigation revealed that Respondent has been a party to
many UDRP proceedings in relation to infringing domain names. Respondent is not
licensed by Complainant to use the LEW MAGRAM mark.
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 Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the Rules.
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.
Complainant established in this
proceeding that it has rights in the LEW MAGRAM mark through registration with
the United States Patent and Trademark Office and by continuous use. Furthermore, Respondent’s <lewmagram.com>
domain name is identical to Complainant’s mark because it incorporates the
entirety of Complainant’s mark and adds the generic top-level domain
“.com.” The addition of a generic top-level
domain is irrelevant because it is a required element of any domain name, and
therefore its addition does not create any distinction between the domain name
and Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant); see also Sporty's
Farm L.L.C. vs. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000), cert.
denied, 530 U.S. 1262 (2000) ("For consumers to buy things or
gather information on the Internet, they need an easy way to find particular
companies or brand names. The most common method of locating an unknown domain
name is simply to type in the company name or logo with the suffix .com").
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent did not respond in this
proceeding and therefore the Panel may assume that Respondent lacks rights and
legitimate interests in the disputed domain name. When Complainant asserts a prima facie case against
Respondent, the burden of proof shifts to Respondent to show that it 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) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent failed to invoke any circumstance that could demonstrate rights or
legitimate interests in the domain name).
Furthermore, because Respondent has not
submitted a Response, it is appropriate for the Panel to accept all reasonable
allegations and inferences in the Complaint as true. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (failure to respond allows all reasonable inferences of fact in
the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent is using a domain name that is
identical to Complainant’s mark in order to divert Internet users interested in
Complainant’s goods and services to a website that features various web links,
including links to direct competitors of Complainant. The use of a website, identical to Complainant’s mark, to divert
Internet users to competing goods for the benefit of Respondent is not
considered to be a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and is not a legitimate, noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Chip Merch., Inc. v.
Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed
domain names were confusingly similar to Complainant’s mark and that
Respondent’s use of the domain names to sell competing goods was illegitimate
and not a bona fide offering of goods); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding use of Complainant’s mark “as a portal to suck surfers
into a site sponsored by Respondent hardly seems legitimate.”).
Respondent has not come forward with
evidence to establish that it is commonly known as LEW MAGRAM or <lewmagram.com>. Therefore, Respondent has not established
that it has rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent has engaged in a pattern of
registering domain names that infringe on the marks of others. Furthermore, this is the second domain name
Respondent registered that is identical to one of Complainant’s marks. As a result of this continuing pattern of
behavior Respondent has exemplified bad faith registration and use pursuant to
Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon
others’ famous and registered trademarks); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145
(eResolution May 3, 2000) (finding that where Respondent registered many domain
names, held them hostage, and prevented the owners from using them, the
behavior constituted bad faith).
Respondent is diverting Internet users to
a website that provides links to various websites and the Panel may infer that
Respondent is doing so to make a profit from the Internet traffic that it diverts
to any of the websites featured at the disputed domain name. Therefore, Respondent is using a domain name
identical to Complainant’s mark in order create a likelihood of confusion as to
the source and sponsorship of those services for Respondent’s own commercial
gain. This type of use is evidence of
bad faith use pursuant to Policy ¶ 4(b)(iv).
See Am. Online, Inc. v.
Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad
faith where Respondent registered and used an infringing domain name to attract
users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its website for
commercial gain).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <lewmagram.com> be
transferred from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 29, 2002.
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