The
Lamar Company, L.L.C. v.
Claim Number: FA0906001265961
Complainant is The
Lamar Company, L.L.C. (“Complainant”), represented by John B.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lamaradvertising.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 2, 2009.
On June 2, 2009, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <lamaradvertising.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 June 3, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 23, 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@lamaradvertising.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lamaradvertising.com> domain name is confusingly similar to Complainant’s LAMAR mark.
2. Respondent does not have any rights or legitimate interests in the <lamaradvertising.com> domain name.
3. Respondent registered and used the <lamaradvertising.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Lamar Company, L.L.C., is the owner of the LAMAR mark, registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1874157 issued January 17, 1995). Complainant has used its LAMAR mark in commerce since as early as the 1930s in connection with its outdoor advertising services.
Respondent registered the <lamaradvertising.com> domain name on January 15, 2004. The disputed domain name resolves to a website containing click-through links which further resolve to the websites of Complainant’s competitors. Respondent has been subjected to at least thirty-three previous adverse UDRP proceedings in which the disputed domain names were transferred to the respective complainants of those proceedings. See, e.g., Bremer Fin. v. Whois Service c/o Belize Domain WHOIS Serv. Lt, FA 1250484 (Nat. Arb. Forum April 15, 2009) (transferring <bremerank.org>); Comfortaire Corp. v. Belize Domain WHOIS Serv. Lt, FA 1218584 (Nat. Arb. Forum Oct. 1, 2008) (transferring <comfortairedirect.com>).
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 concludes that Complainant has adequately
established rights in its LAMAR mark pursuant to Policy ¶ 4(a)(i) through its
registration of the mark with the USPTO.
See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007)
(“As the [complainant’s] mark is registered with the USPTO, [the] complainant
has met the requirements of Policy ¶ 4(a)(i).”); see also 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.”).
The <lamaradvertising.com> domain name contains Complainant’s LAMAR mark in its entirety followed by the descriptive term “advertising” and the generic top-level domain “.com.” The Panel finds that the addition of a term which describes Complainant’s business fails to sufficiently distinguish Respondent’s domain name from Complainant’s mark. The Panel also finds that the addition of the generic top-level domain “.com” is insignificant for the purposes of a Policy ¶ 4(a)(i) analysis. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); 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).”). Thus, the Panel concludes that Respondent’s <lamaradvertising.com> domain name is confusingly similar to Complainant’s LAMAR mark pursuant to Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has sufficiently met its burden of producing a prima facie case that Respondent lacks rights and legitimate interests in the <lamaradvertising.com> domain name under Policy ¶ 4(a)(ii). Therefore, it is Respondent’s responsibility to repudiate Complainant’s assertion and provide evidence that Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). However, Respondent has failed to respond to the allegations against it. Consequently, the Panel may presume that Respondent has no rights or legitimate interests in the <lamaradvertising.com> domain name. See 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 will nevertheless examine the record in consideration of the factors cited under Policy ¶ 4(c).
The disputed domain name resolves to a website featuring click-through links which further resolve to the websites of Complainant’s competitors. The Panel concludes that such use, presumably for financial gain, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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).
Moreover, Complainant contends that Respondent is not
commonly known by the <lamaradvertising.com> domain name under
Policy ¶ 4(c)(ii). The WHOIS information
lists the registrant as “Belize Domain WHOIS Service Lt.,” which suggests that
Respondent is not commonly known by the disputed domain name. There is no evidence in the record to suggest
otherwise. Therefore, the Panel
concludes that Respondent is not commonly known by the <lamaradvertising.com>
domain name under Policy ¶ 4(c)(ii). See Reese
v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by
the <lilpunk.com> domain name as there was no evidence in the record
showing that the respondent was commonly known by that domain name, including
the WHOIS information as well as the complainant’s assertion that it did not authorize
or license the respondent’s use of its mark in a domain name); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has previously been subjected to at least thirty-three
adverse UDRP proceedings, each resulting in the transfer of the infringing
domain name to the respective complainant. See, e.g., Bremer Fin. v. Whois Service
c/o Belize Domain WHOIS Serv. Lt, FA 1250484 (Nat. Arb. Forum April 15, 2009) (transferring
<bremerank.org>); Comfortaire Corp.
v. Belize Domain WHOIS Serv. Lt, FA 1218584 (Nat. Arb. Forum Oct. 1, 2008)
(transferring <comfortairedirect.com>).
Complainant contends that Respondent has a longstanding history of
cybersquatting which constitutes a pattern of bad faith registration and use
under Policy ¶ 4(b)(ii). See N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Nat. Arb. Forum Nov. 3, 2003) (finding that
the complainant’s submission of WHOIS evidence that listed the respondent as the
registrant of other domain names incorporating third-party trademarks was
sufficient to establish that the respondent had a pattern of registering and
using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)); see also Nat’l
Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9,
2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name
prevented the complainant from reflecting its mark in a domain name and the
respondent had several adverse decisions against it in previous UDRP
proceedings, which established a pattern of cybersquatting). The Panel agrees and finds that Respondent
has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).
Complainant alleges that Respondent is using a domain name, which is confusingly similar to Complainant’s LAMAR mark, to attract Internet users to its website containing links to the websites of Complainant’s competitors. The Panel concludes that Respondent has appropriated Complainant’s LAMAR mark to divert Internet users to competing websites, which likely results in a disruption to Complainant’s business. Thus, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant contends Respondent intentionally attempts to attract Internet users, for financial gain, to its domain name by creating a likelihood of confusion with Complainant and its LAMAR mark. The <lamaradvertising.com> domain name contains click-through links which further resolves to websites of Complainant’s competitors. The Panel presumes that Respondent is profiting from such use. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Thus, the Panel concludes that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lamaradvertising.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 13, 2009
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