LD Products, Inc. v. Alichec Inc.
Claim Number: FA1004001316784
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 <123inkjefs.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 <123inkjefs.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 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@123inkjefs.com. Also on April 7, 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 May 5, 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 (the "Rules") "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 <123inkjefs.com> domain name is confusingly similar to Complainant’s 123INKJETS mark.
2. Respondent does not have any rights or legitimate interests in the <123inkjefs.com> domain name.
3. Respondent registered and used the <123inkjefs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LD Products, Inc., serves as one of the largest Internet retailers for printer supplies and accessories. Complainant began operating in 1999. Complainant also holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the 123INKJETS mark (e.g., Reg. No. 3,212,566 issued February 27, 2007).
Respondent registered the <123inkjefs.com> domain name on October 19, 2004. The disputed domain name resolves to a parked website, which provides links to third-party websites.
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 asserts rights in the 123INKJETS mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,212,566 issued February 27, 2007). The Panel finds Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i) through registration of the 123INKJETS mark with the USPTO dating back to 2007. 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).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant also argues it established common law rights in
its 123INKJETS mark through its continuous use since 1999 and the consequent
development of secondary meaning in the mark.
Complainant asserts it began operating in 1999 and has continuously used
the mark since that time. Therefore, the
Panel finds Complainant has provided sufficient evidence of its continuous use
and acquired secondary meaning in the 123INKJETS mark to establish common law
rights in the mark under Policy ¶ 4(a)(i) dating back to 1999. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the complainant need not own a valid
trademark registration for the ZEE CINEMA mark in order to demonstrate its
rights in the mark under Policy ¶ 4(a)(i)); see
also 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).
Complainant claims Respondent’s disputed <123inkjefs.com>
domain name is confusingly similar to Complainant’s mark. Respondent replaces the letter “t” in
Complainant’s mark with the letter “f” in the disputed domain name. Respondent also attaches the generic
top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain
name. The Panel finds these changes do
not distinguish Respondent’s disputed domain name from Complainant’s mark. Therefore, the Panel concludes that
Respondent’s <123inkjefs.com> domain name is confusingly similar
to Complainant’s 123INKJETS mark. See 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); see
also 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 Intelius, Inc.
v. Hyn, FA 703175 (Nat. Arb. Forum July 5,
2006) (finding the <intellus.com> domain name to be confusingly similar
to the complainant’s INTELIUS mark because the domain name differed from the
mark by one letter and was visually similar);
see also Jerry Damson, Inc. v.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima facie case showing Respondent lacks rights or legitimate interests in the disputed <123inkjefs.com> domain name pursuant to Policy ¶ 4(a)(ii). After this initial showing, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests. 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Although Respondent failed to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant claims Respondent is neither affiliated with Complainant nor licensed to use the 123INKJETS mark in a domain name. Furthermore, the WHOIS information does not indicate Respondent is commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant asserts
that Respondent’s <123inkjefs.com> domain name resolves to a parked website that displays links to
third-party websites. Complainant claims
that Respondent likely profits from the use of the disputed domain name in the
form of “pay-per-click” fees. The Panel
finds Respondent’s use of a parked website with third-party links is not 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 St. Farm
Mutual Auto. Insr.
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent uses the <123inkjefs.com>
domain name as a parked website that provides links to third-party websites,
some of which directly compete with Complainant. The Panel finds Respondent’s use of the disputed domain name
disrupts Complainant’s business by diverting Internet users to the websites of
Complainant’s competitors. Therefore,
the Panel concludes Respondent’s disruption constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v.
Complainant also argues Respondent is using the disputed
domain name to intentionally attract, for commercial gain, Internet users to
the parked website by creating confusion as to Complainant’s sponsorship and
affiliation with the disputed domain name.
As previously discussed, Respondent’s disputed domain name is
confusingly similar to Complainant’s 123INKJETS mark. In addition, Respondent presumably receives pay-per-click
fees from the use of the <123inkjefs.com> domain name. The Panel finds this behavior 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 The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
The Panel finds 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 <123inkjefs.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 17, 2010
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