LD Products, Inc. v. WuWeb Pty Ltd
Claim Number: FA0908001281834
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 <1223inkjets.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2009.
On August 27, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <1223inkjets.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. 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 September 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 21, 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@1223inkjets.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 28, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <1223inkjets.com> domain name is confusingly similar to Complainant’s 123INKJETS mark.
2. Respondent does not have any rights or legitimate interests in the <1223inkjets.com> domain name.
3. Respondent registered and used the <1223inkjets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LD Products, Inc., is an Internet retailer for printer supplies and accessories including inkjet cartridges, laser tone cartridges, and refill kits. Complainant has used the 123INKJETS mark in commerce since 1999 when the company was founded. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its 123INKJETS mark (Reg. No. 3,212,566 issued February 27, 2007). In 2007 alone, Complainant generated approximately $30 million in revenue. Complainant advertises its products under the 123INKJETS mark on the Internet through Google and other popular search engines.
Respondent, WuWeb Pty Ltd, registered the <1223inkjets.com> domain name on October 19, 2004. The disputed domain name resolves to a website featuring a commercial search engine and hyperlinks to Complainant’s competitors in the printer supplies and accessories industry.
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.
Previous panels have held that a trademark registration with the USPTO is sufficient to establish rights in a complainant’s mark. Complainant has registered the 123INKJETS mark with the USPTO and holds a valid trademark registration for the mark (Reg. No. 3,212,566 issued February 27, 2007). Therefore, the Panel finds that Complainant has established rights in its 123INKJETS mark through its registration with the USPTO pursuant to Policy ¶ 4(a)(i). 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).”). Furthermore, the Panel notes that it is not necessary for Complainant to have registered its 123INKJETS mark in the country of Respondent’s residence. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Prior to Respondent’s registration of the <1223inkjets.com> domain name on October 19, 2004, Complainant did not possess a trademark registration for its 123INKJETS mark. However, Complainant contends that it has acquired sufficient common law rights in the mark dating back to 1999 when Complainant was founded. Complainant is an Internet retailer for printer supplies and accessories, including inkjet cartridges, laser tone cartridges, and refill kits. Complainant has expended significant resources in marketing and advertising under its 123INKJETS mark. Furthermore, Complainant generated approximately $30 million in revenue between 2007 and 2008 which shows that Complainant has established widespread goodwill and brand recognition among its customers. In order to demonstrate common law rights in the mark, Complainant must establish sufficient secondary meaning under Policy ¶4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). The Panel finds that Complainant has provided sufficient evidence of secondary meaning associated with the 123INKJETS mark through its continuous use of the mark, and resulting widespread public awareness of the mark through substantial revenues since 1999. Thus, the Panel concludes that Complainant has acquired common law rights in the 123INKJETS mark under Policy ¶ 4(a)(i) prior to Respondent’s registration of the <1223inkjets.com> domain name on October 19, 2004. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Complainant alleges that Respondent’s <1223inkjets.com>
domain name is confusingly similar to Complainant’s 123INKJETS mark under
Policy ¶ 4(a)(i). The disputed domain
name features Complainant’s mark in its entirety with the mere addition of the
number “2” and the affixation of the generic top-level domain (“gTLD”)
“.com.” The Panel finds that these
additions fail to alleviate the confusing similarity between Respondent’s disputed domain name and Complainant’s
123INKJETS mark. Thus, the Panel finds
that Respondent’s <1223inkjets.com> domain name is confusingly
similar to Complainant’s 123INKJETS mark under Policy ¶ 4(a)(i).
See Am. Online, Inc. v. garybush co
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the <1223inkjets.com> domain name. The burden then shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). 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. Subsequently, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”). The Panel will however, examine the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent’s <1223inkjets.com> domain name resolves to a website featuring click-through links that further resolve to the websites of Complainant’s competitors in the printer supplies and accessories industry. The Panel presumes that Respondent is generating revenue through the use of these sponsored links. Thus, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. 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)).
Moreover, Complainant contends that Respondent is not commonly known by the <1223inkjets.com> domain name under Policy ¶ 4(c)(ii). The pertinent WHOIS information identifies the registrant of the disputed domain name as “WuWeb Pty Ltd.” As Respondent did not submit a response to Complainant’s allegations, there is no evidence in the record to suggest that Respondent is otherwise commonly known by the <1223inkjets.com> domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was 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’s use of a common misspelling of Complainant’s 123INKJETS mark in forming the <1223inkjets.com> domain name for the evident purpose of redirecting Internet users seeking Complainant constitutes typosquatting, which is further evidence that Respondent lacks rights and 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”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The disputed domain name resolves to a website containing sponsored links that further resolve to the websites of Complainant’s competitors in the printer supplies and accessories industry. The Panel finds that such use of the confusingly similar disputed domain name to redirect Internet users to Complainant’s competitors likely disrupts Complainant’s business. Thus, the Panel concludes that Respondent has engaged in bad faith registration and use of the <1223inkjets.com> domain name 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 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 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 that Respondent is likely generating click-through revenue as a result
of the sponsored links that appear at the disputed domain name. The Panel
finds that Respondent is intentionally attempting to attract Internet users for
financial gain to its domain name by creating a likelihood of confusion with
Complainant and its 123INKJETS mark. Therefore, the Panel concludes that
Respondent has engaged in bad faith registration and use of the <1223inkjets.com>
domain name 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 T-Mobile USA, Inc. v.
utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that
the registration and use of a domain name confusingly similar to a
complainant’s mark to direct Internet traffic to a commercial “links page” in
order to profit from click-through fees or other revenue sources constitutes
bad faith under Policy ¶ 4(b)(iv)).
Furthermore, Respondent has engaged in typosquatting through its use of the <1223inkjets.com> domain name, which incorporates a common misspelling of Complainant’s 123INKJETS mark. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use 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) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds that 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 <1223inkjets.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 12, 2009
National Arbitration Forum
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