LD Products, Inc. v. Private Whois Service
Claim Number: FA1004001322308
Complainant is LD Products, Inc. (“Complainant”), represented by Karl
S. Kronenberger, of Kronenberger Burgoyne, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <4inkjers.com>, registered with Internet.bs Corp.
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 April 30, 2010.
On May 2, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <4inkjers.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 May 4, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 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@4inkjers.com by e-mail. Also on May 4, 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 28, 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 <4inkjers.com> domain name is confusingly similar to Complainant’s 4INKJETS mark.
2. Respondent does not have any rights or legitimate interests in the <4inkjers.com> domain name.
3. Respondent registered and used the <4inkjers.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 with offices in both
Respondent registered the <4inkjers.com> domain name on July 18, 2003. Respondent’s disputed domain name has not been connected with an active website since its registration.
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 alleges it holds a trademark registration with
the USPTO for its 4INKJETS mark (Reg. No. 2,998,115 issued September 20,
2005). However, Respondent registered
the disputed domain name on July 18, 2003, prior to Complainant’s trademark
registration. The Panel finds that
Complainant can establish rights in its mark if it can show it possesses common
law rights under Policy ¶ 4(a)(i). See
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); see also 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)).
Complainant alleges that it has established common law
rights in its mark prior to Respondent’s registration of the disputed domain
name because Complainant has been continually and extensively using its
4INKJETS mark in commerce since 1999.
Complainant submits evidence to show that it has received high user
ratings and recognition within the Internet e-retailer community. Complainant further contends that it has
devoted extensive resources to advertise and market its 4INKJETS mark by
issuing press releases, using pay-per-click advertising on major search engines
and partnering with online coupon distributors for its products. Complainant alleges that these expenditures,
in the amount of $6 million per year, have resulted in its widely publicized
and commonly known mark and sales that exceed $34 million annually. The Panel finds that Complainant has
established common law rights in its 4INKJETS mark pursuant to Policy ¶ 4(a)(i) through its continuous and extensive use of its
4INKJETS mark since 1999 that has been widely publicized and received secondary
meaning in the public. See Quality Custom
Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb.
Forum Sept. 7, 2002) (finding that the complainant established common law
rights in the mark through continuous use of the mark since 1995 for the
purpose of Policy ¶ 4(a)(i)); see also
Complainant argues that
Respondent’s <4inkjers.com> domain name is confusingly
similar to Complainant’s 4INKJETS mark.
To support this allegation Complainant notes that the disputed domain
name contains a misspelled version of its mark that replaces the letter “t” in
the “jets” portion of its mark with the letter “r,” in addition to the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that Respondent’s <4inkjers.com>
domain name is confusingly similar to Complainant’s 4INKJETS mark under Policy
¶ 4(a)(i) where it contains a misspelled version of
Complainant’s mark and the gTLD “.com.” 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 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights
or legitimate interests in the <4inkjers.com>
domain name. Complainant is required to
make a prima facie case in support of
these allegations. Once the Complainant
has produced a prima facie case the
burden shifts to Respondent to show it has a right or legitimate interest in
the <4inkjers.com> domain
name. 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 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)). The Panel finds that Complainant
has established a prima facie
case. Because Respondent failed to
respond to these proceedings, the Panel may assume Respondent does not have any
rights or legitimate interests in the <4inkjers.com>
domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where the respondent fails to
respond); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel will evaluate the evidence on record to determine if
Respondent possesses any rights or legitimate interests in the disputed domain
name under Policy ¶ 4(c)(i).
The WHOIS information for the
disputed domain name does not indicate that Respondent is commonly known by the
disputed domain, and Respondent offers no evidence to affirm that it is
commonly known by the disputed domain. Complainant asserts that it has not authorized
Respondent to use its mark and that the information on record for the <4inkjers.com> domain name shows that
Respondent is not commonly known by the <4inkjers.com>
domain name. The Panel agrees and finds
that Respondent is not commonly known by the disputed domain name under Policy
¶ 4(c)(ii) where no evidence on record indicates that Respondent is commonly
known by the <4inkjers.com>
domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); 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).
Complainant further
alleges that Respondent lacks rights and legitimate interests in the disputed
domain name because Respondent has failed to make an active use of the disputed
domain name. Complainant contends that
there is no evidence of any website development in the seven years that
Respondent has owned the disputed domain name, and that failure to make an
active use of the <4inkjers.com>
domain name is further evidence of
Respondent’s lack of rights and legitimate interests. The Panel finds that Respondent’s failure to
make an active use of the <4inkjers.com>
domain name or any demonstrable preparations to use the disputed domain name
does not qualify as 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had
no rights or legitimate interests in a domain name under either Policy ¶
4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the
domain name); see also VICORP Rests., Inc. v. Paradigm Techs. Inc., FA
702527 (Nat.
Arb. Forum June 21,
2006) (finding that the respondent’s failure to use the disputed domain name
for several years was not a bona
fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii)).
Complainant argues
that Respondent has engaged in typosquatting through its registration of the <4inkjers.com> domain name, which
contains a common misspelling of Complainant’s 4INKJETS mark. Complainant contends that registration of the
disputed domain name containing a typographical error is further proof of
Respondent’s lack of rights and legitimate interests in the <4inkjers.com> domain name. The Panel finds that Respondent lacks rights
and legitimate interests in the <4inkjers.com>
domain name pursuant to Policy ¶ 4(a)(ii) through its
registration of a commonly misspelled version of Complainant’s mark. See IndyMac Bank
F.S.B. v. Ebeyer, FA 175292
(Nat. Arb. Forum Sept. 19, 2003)
(finding that the respondent lacked rights and legitimate interests in the
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 <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”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
The Panel finds that it may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that the review is not limited to the enumerated factors in Policy ¶ 4(b) but to the totality of the circumstances. 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.”).
Complainant has submitted evidence to show that Respondent has not used, or made demonstrable preparations to use, the <4inkjers.com> domain name since registering it in 2003. Complainant argues that Respondent’s failure to make an active use of the disputed domain name is evidence of bad faith registration and use. The Panel agrees and finds that Respondent’s failure to make an active use of the disputed domain, or to submit evidence of its preparations to use the disputed domain name, is evidence of 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 DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel has already determined that Respondent engaged in typosquatting through its registration of the <4inkjers.com> domain name that is a commonly misspelled version of Complainant’s mark. The Panel finds that the registration of a misspelled version of Complainant’s mark in a domain name constitutes bad faith registration 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 Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds 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 <4inkjers.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 10, 2010
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