Lionel L.L.C. v. BWI Domains a/k/a Domain Manager
Claim Number: FA0902001246463
Complainant is Lionel L.L.C. (“Complainant”), represented by William
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lionelville.com>, registered with Rebel.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant manufactures toy trucks and trains.
The LIONELVILLE trademark is registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,758,658, issued September 2, 2003).
Respondent registered the <lionelville.com>
domain name on
The disputed domain name resolves to a “parked” website that lists links to websites unrelated to Complainant.
Respondent’s <lionelville.com> domain name is identical to Complainant’s LIONELVILLE mark.
Respondent does not have any rights to or legitimate interests in the <lionelville.com> domain name.
Respondent registered and uses the <lionelville.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantially identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been 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
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.
Complainant’s registration of the LIONELVILLE trademark with
the USPTO establishes Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i). See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum
The <lionelville.com>
domain name includes Complainant’s LIONELVILLE mark in its entirety and merely adds
the generic top-level domain (gTLD) “.com.”
The domain name <lionelville.com> is therefore
substantially identical to Complainant’s LIONELVILLE mark pursuant to Policy ¶
4(a)(i). See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
name. If Complainant’s allegations
establish such a prima facie case, the burden then shifts to Respondent
to show that it does indeed have rights to or legitimate interests in the
disputed domain name. See Domtar,
Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum
It
is well established that, once a complainant has made out a prima facie case in
support of its allegations, the burden shifts to respondent to show that it
does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the
Policy.
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no
rights to or legitimate interests in the <lionelville.com> domain name pursuant
to Policy ¶ 4(a)(ii). And because no response was submitted in this case, we
may presume that Respondent has no rights to or legitimate interests in the
disputed domain name. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s
failure to respond means that Respondent has not presented any circumstances
that would promote its rights or legitimate interests in the subject domain
name under Policy ¶ 4(a)(ii).
However, the Panel
will nonetheless examine the record in consideration of the factors listed in
Policy ¶ 4(c) to determine if there is any basis for concluding that Respondent
has any such rights or interests.
We begin by noting that there is no evidence in the record to
indicate that Respondent is commonly known by the <lionelville.com>
domain name. Indeed the pertinent WHOIS
information identifies Respondent as “BWI
Domains a/k/a Domain Manager.” We
conclude therefore that Respondent has not established rights to or legitimate
interests in the disputed domain name under Policy ¶ 4(c)(ii). See, for example, Am. W. Airlines,
Inc. v. Paik, FA 206396 (Nat. Arb. Forum
We also observe that there is no dispute as to Complainant’s
allegation to the effect that Respondent is using the <lionelville.com>
domain name, which is substantially identical to Complainant’s LIONELVILLE mark,
to advertise unrelated third-party websites.
In the circumstances, we may infer that Respondent receives
click-through fees when Internet users attempt to access the advertised
sites. This is not a use in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii). See Fox News Network,
LLC v. Reid, D2002-1085 (WIPO
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Because Respondent’s
domain name is substantially identical to Complainant’s LIONELVILLE mark, Internet users accessing Respondent’s
disputed domain name may become confused as to Complainant’s possible affiliation
with the disputed domain name and resulting website. And because Respondent presumably receives
click-through fees for diverting Internet users to third-party websites, Respondent
is attempting to profit from this confusion.
Thus, Respondent’s use of the <lionelville.com>
domain name constitutes bad faith registration
and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond,
FA 680624 (Nat. Arb. Forum
In addition, it appears that Respondent registered the <lionelville.com>
domain name with at least constructive knowledge
of Complainant’s rights in the LIONELVILLE trademark by virtue of Complainant’s prior registration of that mark with
the United States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Complainant has satisfied 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 <lionelville.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: March 24, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum