LD Products, Inc. v. Private Whois Service
Claim Number: FA0909001287032
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 <123iknjets.com>, registered with Internet.bs Corp.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 30, 2009; the National Arbitration Forum received a hard copy of the Complaint October 2, 2009.
On September 30, 2009, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <123iknjets.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. verified that Respondent is bound by the Internet.bs Corp. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 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@123iknjets.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <123iknjets.com>, is confusingly similar to Complainant’s 123INKJETS mark.
2. Respondent has no rights to or legitimate interests in the <123iknjets.com> domain name.
3. Respondent registered and used the <123iknjets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LD Products, Inc., is one of the largest online retailers of printer supplies and accessories. Complainant has operated at the website resolving from the <123inkjets.com> domain name since 1999, where it has continuously and exclusively offered printer supplies under the 123INKJETS mark. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the 123INKJETS mark (Reg. No. 3,212,566 filed October 6, 2005 and issued February 27, 2007).
Respondent registered the <123iknjets.com> domain name November 25, 2003. Respondent’s disputed domain name resolves to a website displaying a blank page.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
Complainant holds a registered trademark for the 123INKJETS mark with the USPTO (Reg. No. 3,212,566 filed October 6, 2005 and issued February 27, 2007). The Panel finds Complainant established rights under Policy ¶ 4(a)(i) with this registration. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (“Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO). However, Complainant’s registration with the USPTO is predated by Respondent’s November 25, 2003 registration of the <123iknjets.com> domain name. The Panel finds that a trademark registration is unnecessary pursuant to Policy ¶ 4(a)(i), provided Complainant can establish common law rights in the mark through a showing of secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant argues that it also established common law rights in the 123INKJETS mark pursuant to Policy ¶ 4(a)(i) through its history of continuous use and showing of secondary meaning. Complainant has used the 123INKJETS mark in connection with its printer supplies and accessories products and services since 1999. Complainant provides evidence that it operates its official website at the <123inkjets.com> domain name and has done so continuously and exclusively since its inception in 1999. Additionally, Complainant offers evidence that Complainant has spent significant amounts of money on advertising and marketing the 123INKJETS mark, which has had the effect of making Complainant’s business one of the largest online retailers of printer supplies in the United States. The Panel finds that Complainant also established common law rights by the creation of a secondary meaning associated between Complainant and its mark in the inkjet industry and with the public pursuant to Policy ¶ 4(a)(i). This secondary meaning predated Respondent’s November 25, 2003 registration of the <123iknjets.com> domain name. 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); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant argues that Respondent’s <123iknjets.com> domain name is confusingly
similar to Complainant’s 123INKJETS mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains a
misspelled version of Complainant’s mark and adds the generic top-level domain
(“gTLD”) “.com.” The Panel finds that a
disputed domain name that contains a misspelled version of a complainant’s
mark, in this case the flipping of the letters “k” and “n,” fails to
distinguish the disputed domain name from the original mark and instead creates
a confusing similarity between the disputed domain name and the complainant’s
mark. See Google Inc. v. Jon
G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com>
to be confusingly similar to the complainant’s GOOGLE mark and noting that
“[t]he transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error”); 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). In addition, the Panel finds that the addition of a gTLD is
irrelevant in distinguishing a disputed domain name from an established
mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see
also 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). Therefore, pursuant to Policy ¶ 4(a)(i),
Respondent’s <123iknjets.com> domain name is confusingly
similar to Complainant’s 123INKJET mark.
The
Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks all rights and legitimate interests in the disputed domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that its rights and legitimate interests exist, pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant established a prima facie case and that Respondent failed to do so. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “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.”); see also 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).
Complainant also contends that Respondent is not commonly known by and has never been licensed to register the disputed domain name. The Panel finds that the registrant’s WHOIS information demonstrates that Respondent is not commonly known by the disputed domain name. Therefore, under Policy ¶ 4(c)(ii), Respondent also lacks rights and legitimate interests in the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
Respondent further has made no active use of the <123iknjets.com> domain name. No evidence on record suggests that Respondent has used or intends to use the disputed domain name in any manner. As a result, the Panel finds that Respondent has not made a bona fide offering of good or services under Policy ¶ 4(c)(i), and has not made a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
Complainant contends that Respondent has engaged in the
practice of typosquatting. Respondent is
taking advantage of Internet users that are attempting to reach Complainant,
but mistakenly misspelling Complainant’s 123INKJETS mark. The Panel finds that Respondent’s engagement
in the practice of typosquatting is evidence that Respondent lacks rights and
legitimate interests in the <123iknjets.com>
domain name under Policy ¶ 4(a)(ii). See LTD
Commodities LLC v. Party Night, Inc., FA
165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also Microsoft Corp. v. Domain Registration
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith in registering and passively holding a domain name that contains in its entirety Complainant’s protected mark. The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis for bad faith, and that is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Respondent registered the <123iknjets.com> domain name but made no active use of it. The Panel finds that such non-use supports findings of bad faith registration and use under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Complainant alleges that typosquatting is itself evidence of
bad faith registration and use under Policy ¶ 4(a)(iii). The Panel agrees and finds that Respondent’s <123iknjets.com> domain name is
merely a typosquatted version of Complainant’s 123INKJETS mark, and that such
typosquatting also supports findings of bad faith registration and use under
Policy ¶ 4(a)(iii). See Microsoft Corp. v. Domain Registration
The Panel finds that Complainant satisfied the elements of ICANN 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 <123iknjets.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 27, 2009.
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