national arbitration forum

 

DECISION

 

LD Products, Inc. v. A Domain Serve

Claim Number: FA1004001317124

 

PARTIES

Complainant is LD Products, Inc. (“Complainant”), represented by Matthew M. Thomson, of Kronenberger Burgoyne, LLP, California, USA.  Respondent is A Domain Serve (“Respondent”), Germany.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <123inkjts.com>, registered with Dotregistrar.

 

PANEL

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2010.

 

On April 2, 2010, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <123inkjts.com> domain name is registered with Dotregistrar and that Respondent is the current registrant of the name.  Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@123inkjts.com.  Also on April 9, 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 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <123inkjts.com> domain name is confusingly similar to Complainant’s 123INKJETS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <123inkjts.com> domain name.

 

3.      Respondent registered and used the <123inkjts.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, LD Products, Inc., has registered its 123INKJETS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,212,566 issued February 27, 2007). Complainant has used its mark in commerce since December 9, 1999, in connection with online sales of printer supplies and accessories which include inkjet cartridges, laser toner cartridges and refill kits.

 

Respondent, A Domain Serve, registered the disputed domain name <123inkjts.com> on July 22, 2002. The disputed domain name resolves to an inactive website, and there is no evidence of any website development in the eight years that Respondent has owned the disputed domain name.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has asserted it has rights in its 123INKJETS mark via its registration with the USPTO (Reg. No. 3,212,566 issued February 27, 2007). The Panel finds that Complainant’s registration of its 123INKJETS mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).  See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).

 

In addition to asserting its registered rights in the 123INKJETS mark, Complainant asserts it has common law rights in its 123INKJETS mark through its continuous use in commerce since December 9, 1999 in connection with online retail sales of printer supplies and accessories. 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 Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).

 

Complainant alleges that Respondent’s <123inkjts.com> domain name is confusingly similar to Complainant’s 123INKJETS mark. Respondent’s disputed domain name removes the “e” of Complainant’s mark and adds the generic top-level domain “.com.” The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that … [the] addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the <123inkjts.com> domain name. Once Complainant has made a prima facie case in support of this allegation, the burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii). Based on the allegations made in the Complainant, the Panel finds Complainant has established a prima facie case, thus shifting the burden to the Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“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).”).

 

Complainant contends that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <123inkjts.com> domain name lists “A Domain Serve” as the registrant, which indicates that Respondent is not commonly known by the disputed domain name. Further, Complainant asserts no license or other authorization has been given to Respondent to use the 123INKJETS mark. Therefore, the Panel finds these facts, together with the absence of information to the contrary, establish the conclusion that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  See 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); 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 know by the disputed domain name).

 

Respondent has not used the disputed domain name in connection with an active website. Complainant argues that this type of use is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that Respondent’s failure to make an active use of the <123inkjts.com> domain name is not a use in connection with 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely passively held the domain name).

 

Complainant asserts that the <123inkjts.com> domain name is an intentional misspelling of the 123INKJETS mark. The Panel finds that this constitutes the practice of typosquatting, which is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it 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 Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

 

Respondent has failed to make an active use of the <123inkjts.com> domain name. The disputed domain name does not resolve to a website, and there is no evidence of any website development in the eight years that Respondent has owned the disputed domain name. The Panel finds Respondent’s failure to make an active use of the confusingly similar disputed domain name is evidence that Respondent registered and used the <123inkjts.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).

 

Additionally, the Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the <123inkjts.com> domain name. The Panel finds that this practice is further evidence of bad faith registration and use with respect to the disputed domain name under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <123inkjts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  May 12, 2010

 

 

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