LD Products, Inc. v. Rakshita Mercantile Private Limited
Claim Number: FA0907001271503
Complainant is LD
Products, Inc. (“Complainant”), represented by Matthew M. Thomson, of Kronenberger Burgoyne, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <123inljets.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd.
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 June 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 6, 2009.
On July 2, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicd confirmed by e-mail to the National Arbitration Forum that the <123inljets.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicd and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicd has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicd 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 July 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 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@123inljets.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 31, 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 markets and sells printer supplies and accessories, and has used the 123INKJETS mark in connection with its business since 1999.
Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its 123INKJETS trademark (Reg. No. 3,212,566, issued February 27, 2007).
Respondent has never been authorized by Complainant to use the 123INKJETS mark.
Respondent registered the <123inljets.com> domain name on July 28, 2008.
The disputed domain name resolves to a website featuring links to the websites of Complainant’s business competitors.
Respondent’s <123inljets.com> domain name is confusingly similar to Complainant’s 123INKJETS mark.
Respondent does not have any rights to or legitimate interests in the <123inljets.com> domain name.
Respondent registered and uses the <123inljets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar 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 same domain name was 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 July 31, 2000) (holding that a 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:
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.
On the record before us, there is no dispute that Complainant holds a trademark registration with the USPTO for the 123INKJETS mark. Such a registration is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where a complainant submitted evidence of its registration of a mark with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <123inljets.com> domain name is confusingly similar to Complainant’s 123INKJETS mark. The disputed domain name simply misspells Complainant’s mark by switching the letter “k” for the letter “l,” and adds the generic top-level domain (“gTLD”) “.com.” For purposes of the Policy, neither the misspelling of the mark nor the addition of a gTLD distinguishes the disputed domain name from Complainant’s 123INKJETS mark. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s disputed domain names were confusingly similar to a complainant’s mark because the domain names were common misspellings of the mark); 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 renders a disputed domain name confusingly similar to a complainant’s marks); further see Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have rights to or legitimate interests in the <123inljets.com> domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does nonetheless have such rights or legitimate interests within the contemplation of Policy ¶ 4(a)(ii). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a:
complainant
must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the]
respondent to show it does have rights or legitimate interests.
Complainant has made out a sufficient prima facie case. Because of Respondent’s failure to respond to the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint made under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence).
However, we will examine the record to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the <123inljets.com> domain name under the tests set out in Policy ¶ 4(c).
We begin by noting that there is no dispute as to Complainant’s allegation to the effect that Respondent uses the <123inljets.com> domain name to resolve to a website featuring links to the sites of Complainant’s business competitors. Such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that a respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to a complainant’s competitors in the financial services industry); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s use of a complainant’s mark in contested domain names to send Internet users to a website which displayed links to that complainant’s competitors was not a bona fide offering of goods or services).
We also observe that Complainant asserts, and Respondent does not deny, that Respondent has never been authorized to use the 123INKJETS mark. Moreover, the pertinent WHOIS information lists Respondent as “Rakshita Mercantile Private Limited.” We conclude, therefore, that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the relevant WHOIS information and other evidence in the record).
Finally under this heading, Respondent’s undenied use of a common misspelling of Complainant’s 123INKJETS mark in forming the <123inljets.com> domain name for the evident purpose of redirecting Internet users seeking Complainant constitutes typo-squatting, which is further evidence that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights and legitimate interests in disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the domain names <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> were intentional misspellings of Complainant's LTD COMMODITIES mark and that this “‘typosquatting’ is evidence that Respondent lacks rights to or legitimate interests in the domain names”); further see Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that a respondent’s disputed domain names were confusingly similar to a complainant’s mark because the domain names were common misspellings of the mark).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges the <123inljets.com> domain name, which is confusingly similar to Complainant’s 123INKJETS mark, resolves to a website featuring links to Complainant’s business competitors. Respondent does not deny this assertion. This use of the disputed domain name constitutes a disruption of Complainant’s business, which is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to a competing mark to attract Internet users to a website containing links to the websites of a complainant’s commercial competitors constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where a respondent’s website featured links to the websites of a complainant’s competitors, that use of the <redeemaamiles.com> domain name constituted disruption of a complainant’s business under Policy ¶ 4(b)(iii)).
In addition, from the circumstances here presented, we
presume that Respondent receives click-through fees from the links to
Complainant’s competitors. Thus Respondent
is using the disputed domain name to profit from Internet users’ likely confusion
as to Complainant’s possible affiliation with the resolving website. Respondent’s use of the disputed domain name as
described constitutes bad faith registration and use of the disputed domain
name under Policy ¶ 4(b)(iv). See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by employing it to form a domain name that resolved to a website offering links to third-party websites featuring services similar to those offered by that complainant).
Furthermore, we have already determined that Respondent has
engaged in typosquatting through its use of the <123inljets.com>
domain name, which is further evidence of bad faith registration and use of the
domain pursuant to Policy ¶ 4(a)(iii). See
Canadian Tire Corp. v. domain adm’r, D2003-0232 (WIPO May 22, 2003) (finding
that a respondent registered and used a domain name in bad faith where that
respondent “created ‘a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of the Respondent’s web
site or location’. . . through Respondent’s persistent practice of
‘typosquatting’”); see also Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15, 2003):
Typosquatting
itself is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii).
The Panel thus finds Complainant has satisfied Policy ¶ 4(a)(i).
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 <123inljets.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 12, 2009
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