LD Products, Inc. v. Balram Brahmin
Claim Number: FA1004001316756
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 <123inknets.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 31, 2010.
On April 1, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <123inknets.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 April 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@123inknets.com. Also on April 6, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <123inknets.com> domain name is confusingly similar to Complainant’s 123INKJETS mark.
2. Respondent does not have any rights or legitimate interests in the <123inknets.com> domain name.
3. Respondent registered and used the <123inknets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LD Products, Inc., markets and sells printer supplies and accessories. Complainant has offered these products under its 123INKJETS mark since 1999. 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).
Respondent, Balram Brahmin, registered the <123inknets.com> domain name on October 19, 2004. The disputed domain name resolves to a parked domain name that features third-party hyperlinks to and advertisements for competitors of Complainant’s in the printer supplies and accessories business.
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.
Complainant holds a trademark registration with the USPTO for its 123INKJETS mark (Reg. No. 3,212,566 issued February 27, 2007). However, Complainant wishes to assert Complainant’s rights in the mark sating back to 1999, prior to Respondent’s registration of the <123inknets.com> domain name. Previous panels have held that a trademark registration is not required in order for a complainant to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). The Panel finds accordingly.
Complainant alleges that it has operated under its
123INKJETS mark since 1999 and since that time has continuously used the mark
to market and sell printer supplies and accessories. Complainant asserts that it has vigilantly
protected the mark since it first began using it in 1999, and Complainant has
spent significant sums of money on advertising and marketing of the 123INKJETS
mark. Complainant states that it uses
Internet marketing and
advertising on major search engines and other Internet marketing options. Complainant alleges its revenues have grown
since its inception and recently reported $30 million in revenue under its
123INKJETS mark. The Panel finds Complainant has established common law rights in
its 123INKJETS mark through continuous and extensive commercial use since 1999 predating
Respondent’s registration of the disputed domain name on October 19, 2004 under
Policy ¶ 4(a)(i).
See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA
685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had
demonstrated common law rights in the ATPE mark through continuous use of the
mark in connection with educational services for over twenty-five years); see also Hiatt v. personal fan &
official site builders : we build great sites, FA 881460 (Nat. Arb. Forum
Feb. 21, 2007) (“[R]egistration with a trademark authority is unnecessary under
Policy ¶ 4(a)(i) in instances where a mark has gained
secondary meaning through extensive commercial use and common law rights have
been established ….”).
Complainant contends that Respondent’s <123inknets.com>
domain name is confusingly similar to Complainant’s 123INKJETS mark. The disputed domain name contains a common
typing mistake and misspelling of Complainant’s mark by replacing the letter
“j” with the letter “n.” Respondent also
adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. Previous panels have determined that a common
misspelling of a complainant’s mark and the addition of a gTLD fail to
adequately distinguish a disputed domain name from a complainant’s mark. See Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also Jerry
Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <123inknets.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the <123inknets.com> 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)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent had failed to present any evidence, and the Panel finds no evidence in the record, that Respondent is commonly known by the <123inknets.com> domain name. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s 123INKJETS mark for any purpose. The WHOIS information identifies the domain name registrant as “Balram Brahmin,” which the Panel determines is not similar to the <123inknets.com> domain name. For these reasons, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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 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).
Respondent uses the <123inknets.com> domain name to resolve to a parked website featuring hyperlinks and advertisements relating to Complainant’s competitors in the printer supplies and accessories industry. Complainant alleges that Respondent receives click-through fees from the aforementioned hyperlinks and advertisements. The Panel finds that Respondent’s use of the confusingly similar <123inknets.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel determines Policy ¶ 4(a)(ii) has been satisfied.
Complainant claims that Respondent’s use of the <123inknets.com> domain name disrupts Complainant’s printer supplies and accessories business. Previous panels have concluded that the use of a disputed domain name to feature hyperlinks and advertisements to a complainant’s competitors disrupts a complainant’s business because Internet users interested in the complainant may purchase products from the complainant’s competitors instead of the complainant because of the respondent’s use of the disputed domain name. 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). Respondent’s domain name resolves to a parked website that contains hyperlinks and advertisements to Complainant’s competitors in the printer supplies and accessories industry. Therefore, the Panel finds that Respondent’s use of the <123inknets.com> domain name disrupts Complainant’s business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant alleges, and the Panel infers, that Respondent commercially profits from its use of the <123inknets.com> domain name. The disputed domain name resolves to a website containing hyperlinks and advertisements. Complainant contends that Respondent profits from the receipt of click-through fees. Respondent is attempting to profit from Internet users’ confusion as to Complainant’s affiliation with the disputed domain name and resolving website. Respondent profits from this confusion each time an Internet user is redirected to the resolving website and clicks on one of the featured hyperlinks. The Panel finds Respondent’s use of the <123inknets.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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)); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
The Panel concludes that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <123inknets.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 11, 2010
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