Liberty League International, L.L.C. v. Liu US
Claim Number: FA0906001268268
Complainant is Liberty League International, L.L.C. (“Complainant”), represented by Brian R. Coleman, of Perkins Coie LLP, California, USA. Respondent is Liu US (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <libertyleague.us>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 16, 2009.
On June 22, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <libertyleague.us> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.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 July 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 22, 2009 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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 <libertyleague.us> domain name is confusingly similar to Complainant’s LIBERTY LEAGUE INTERNATIONAL mark.
2. Respondent does not have any rights or legitimate interests in the <libertyleague.us> domain name.
3. Respondent registered and used the <libertyleague.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant offers services in the personal development and self-help industries under the LIBERTY LEAGUE INTERNATIONAL mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on April 27, 2004 (Reg. No. 2,836,342). Complainant receives 10,000 to 15,000 visitors to its website at <libertyleague.com> every month, and has used the LIBERTY LEAGUE INTERNATIONAL mark continuously in commerce since at least as early as 2001.
Respondent registered the <libertyleague.us> domain name on September 8, 2008. The disputed domain name resolves to a website that provides advertising and links for third-party websites that are in competition with Complainant.
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.
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.
The Panel finds that Complainant has established rights in
the LIBERTY LEAGUE INTERNATIONAL mark for purposes of Policy ¶ 4(a)(i) through
its trademark registration with the USPTO.
See Paisley Park Enters. v.
Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the
complainant had established rights in the PAISLEY PARK mark under [UDRP] ¶
4(a)(i) through registration of the mark with the USPTO); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive [or] have acquired secondary meaning.”).
Respondent’s <libertyleague.us> domain name is confusingly similar to Complainant’s LIBERTY
LEAGUE INTERNATIONAL mark. The <libertyleague.us>
domain name differs from Complainant’s
mark in three negligible ways: (1) the spaces have been removed from the mark; (2)
the term “international” has been removed from the end of the mark; and (3) the
generic top-level domain (gTLD) “.us” has been added to the mark. The Panel finds that removing the term
“international” does not sufficiently distinguish a domain name from that mark
for the purposes of Policy ¶ 4(a)(i), and that the removal spaces likewise has
no bearing on the distinction between the disputed domain name and a mark. See
Tesco Pers. Fin. Ltd. v. Domain
Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the
Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’
mark in that it merely omits the descriptive term ‘personal.’”); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum
June 22, 2005) (finding the <americaneaglestores.com> domain name to be
confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). The Panel also finds that the addition of a ccTLD is
inconsequential when considering whether a domain name is confusingly similar
to a mark. See Porto Chico
Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the
panel should resolve whether a mark is identical or confusingly similar “by
comparing the trademark and the disputed domain name, without regard to the
circumstances under which either may be used”). Therefore,
the Panel finds that despite these changes, the <libertyleague.us> domain name is not sufficiently distinguished from
Complainant’s LIBERTY LEAGUE INTERNATIONAL mark,
and so Respondent’s <libertyleague.us>
domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <libertyleague.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent is not commonly known
by the disputed
domain names, nor has it ever been the owner or licensee of the LIBERTY
LEAGUE INTERNATIONAL mark. The WHOIS
record for the disputed domain names lists Respondent as “Liu US.”
Because Respondent has failed to show any evidence that Respondent has
ever been commonly known by the disputed domain names, or by any other variant
on the LIBERTY LEAGUE INTERNATIONAL mark, the Panel finds that Respondent is
not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(iii).
See IndyMac Bank F.S.B.
v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21,
2007) (concluding a respondent has no rights or legitimate interests in a
disputed domain name where there was no evidence in the record indicating that
the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain names to host a website that features links to third-party websites that offer personal development and self-help services similar to those offered by Complainant. The Panel assumes that Respondent receives “click-through” fees from those third-party websites, and therefore is commercially benefitting from the use of the disputed domain names. The Panel finds that this use by Respondent of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to [UDRP] ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) or a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii)).
Complainant also contends that Respondent has offered to sell the disputed domain name for more than out-of-pocket costs. The Panel finds that an offer of sale of this sort is evidence that the registrant of a disputed domain name lacks all rights and legitimate interests in the disputed domain name, and therefore, it finds that Respondent lacks all rights and legitimate interests in the <libertyleague.us> domain name pursuant to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under [UDRP] ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent made an offer to Complainant to sell the disputed domain name for more than out-of-pocket costs, and this is evidence that Respondent registered the <libertyleague.us> domain name in bad faith pursuant to 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 Policy ¶ 4(b)(i)).
The disputed domain name directs Internet customers to
Respondent’s website that resolves from the disputed domain names, where they
are further directed to third-party websites that offer services in the same
market as Complainant. The Panel finds
that Respondent is disrupting Complainant’s business, and therefore, that
Respondent’s registration or use of the disputed domain name is in bad faith
pursuant to Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith
registration and use pursuant to [UDRP] ¶ 4(b)(iii) where a respondent used the
disputed domain name to operate a commercial search engine with links to the
complainant’s competitors); see
also Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA
877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly
similar domain name to attract Internet users to a directory website containing
commercial links to the websites of a complainant’s competitors represents bad
faith registration and use under [UDRP] ¶ 4(b)(iii)).
Respondent is gaining commercially from this diversion,
through the receipt of click-through fees from the third-party websites. The Panel finds that Respondent is
intentionally using the disputed domain name for commercial gain by creating a
likelihood of confusion with Complainant’s mark, evidence of bad faith pursuant
to Policy ¶ 4(b)(iv). See 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); see also Asbury
Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum
May 29, 2007) (finding that the respondent’s use of the disputed domain name to
advertise car dealerships that competed with the complainant’s business would
likely lead to confusion among Internet users as to the sponsorship or
affiliation of those competing dealerships, and was therefore evidence of bad
faith registration and use pursuant to [UDRP] ¶
4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <libertyleague.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 9, 2009
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