MBM Company, Inc. v. Domain Names, by Proxy, Inc. c/o domainnamesbyproxy.com
Claim Number: FA0904001257218
Complainant is MBM
Company, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <liimogesjewelry.com>, <limmogesjewelry.com>, <limogesjeewelry.com>, <limogesjeweelry.com>, <limogessjewelry.com>, <llimogesjewelry.com>, and <lumogesjewelry.com>, registered with Godaddy.com, Inc.
The undersigned 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2009.
On April 10, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <liimogesjewelry.com>, <limmogesjewelry.com>, <limogesjeewelry.com>, <limogesjeweelry.com>, <limogessjewelry.com>, <llimogesjewelry.com>, and <lumogesjewelry.com> domain names were all registered with Godaddy.com, Inc. on August 12, 2008 and that Respondent is the current registrant of the names. 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 April 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 6, 2009 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@liimogesjewelry.com, postmaster@limmogesjewelry.com, postmaster@limogesjeewelry.com, postmaster@limogesjeweelry.com, postmaster@limogessjewelry.com, postmaster@llimogesjewelry.com, and postmaster@lumogesjewelry.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s
<liimogesjewelry.com>, <limmogesjewelry.com>,
<limogesjeewelry.com>, <limogesjeweelry.com>, <limogessjewelry.com>,
<llimogesjewelry.com>, and <lumogesjewelry.com> domain
names are confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <liimogesjewelry.com>, <limmogesjewelry.com>, <limogesjeewelry.com>, <limogesjeweelry.com>, <limogessjewelry.com>, <llimogesjewelry.com>, and <lumogesjewelry.com> domain names.
3. Respondent registered and used the <liimogesjewelry.com>, <limmogesjewelry.com>, <limogesjeewelry.com>, <limogesjeweelry.com>, <limogessjewelry.com>, <llimogesjewelry.com>, and <lumogesjewelry.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MBM Company, Inc., wholly owns its subsidiary
Limoges Jewelry, which has supplied top-name retailers with personalized
jewelry for over 20 years. Complainant
has made continuous use of its
The disputed domain names were registered on August 12, 2008. Each disputed domain name resolves to a website that displays click-through advertising for various third parties, including Complainant’s competitors.
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 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 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.
The Panel finds that Complainant’s registration of the
The <liimogesjewelry.com>, <limmogesjewelry.com>, <limogesjeewelry.com>, <limogesjeweelry.com>, <limogessjewelry.com>, <llimogesjewelry.com>, and <lumogesjewelry.com> domain names each contain Complainant’s LIMOGES mark in either correct or misspelled form, while including the generic top-level domain “.com” and the descriptive term “jewelry,” again in either correct or misspelled form. The Panel finds that none of these alterations and additions create sufficient distinction so as to thwart a finding of confusing similarity; hence the Panel finds that all of the disputed domain names are confusingly similar to the mark under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The Panel notes that the WHOIS information lists Respondent
as “Domain Names, by Proxy, Inc. c/o domainnamesbyproxy.com.” Moreover, Complainant argues that Respondent
is not permitted or authorized to use Complainant’s mark. Complainant asserts, and the Panel so finds,
that Respondent is not nor has ever been commonly known by the disputed domain
names under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Respondent’s disputed domain names resolve to websites that promote Complainant’s competitors via click-through advertising and links. The Panel presumes Respondent has conducted this venture for the receipt of referral fees. Therefore, the Panel finds that Respondent has failed to create 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The resolving websites for the disputed domain names each display
advertisements for Complainant’s competitors.
The disruptive nature of this endeavor with regards to Complainant’s
business is clear, and therefore the Panel finds that Respondent has engaged in
Policy ¶ 4(b)(iii) bad faith registration and use of the disputed domain
names. See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also David
The Panel finds that Respondent has created a likelihood of
confusion as to Complainant’s source of, or affiliation with, the disputed
domain names and resolving websites. The
Panel infers Respondent primarily intended to garner commercial benefit through
the registration and use of the confusingly similar disputed domain names and
the resulting advertisements on the corresponding websites. Thus, Respondent has engaged in bad faith
registration and use under Policy ¶ 4(b)(iv). See GMAC
LLC v. WhoisGuard Protected, FA
942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy,
evidence that a domain name registrant has intentionally attempted to attract,
for commercial gain, Internet users to the registrant’s website by creating a
likelihood of confusion with the complainant’s mark serves as evidence of bad
faith.”); see also Williams-Sonoma, Inc.
v. Fees, FA 937704 (Nat. Arb.
Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name
to display links to various third-party websites demonstrated bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <liimogesjewelry.com>, <limmogesjewelry.com>, <limogesjeewelry.com>, <limogesjeweelry.com>, <limogessjewelry.com>, <llimogesjewelry.com>, and <lumogesjewelry.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 26, 2009
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