LC Trademarks, Inc. v. Nelson, Rex
Claim Number: FA1007001333598
Complainant is LC
Trademarks, Inc. (“Complainant”), represented by David R. Haarz, of Harness, Dickey & Pierce, P.L.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <littleceasars.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 6, 2010.
On July 7, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <littleceasars.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 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@<littleceasars.com> by e-mail. Also on July 8, 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 August 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns the LITTLE CAESARS mark, which it licenses to Little Caesar Enterprises, Inc. for its use in marketing for a pizza restaurant chain.
Complainant owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its LITTLE CAESARS mark (including Reg. No. 842,596 issued January 16, 1968).
Respondent registered the <littleceasars.com> domain name on February 8, 2000.
The disputed domain name resolves to a website with the phrase “LOOKING FOR PIZZA CLICK HERE” and provides a link to a website that features hyperlinks to Complainant’s competitors in the pizza industry.
Below the “LOOKING FOR PIZZA CLICK HERE” link, the website features a link to fireworks outlet store which is unrelated to Complainant’s pizza business.
Respondent’s <littleceasars.com> domain name is confusingly similar to Complainant’s LITTLE CAESARS mark.
Respondent is not commonly known by the <littleceasars.com> domain name.
Respondent is not authorized or licensed to use Complainant’s LITTLE CAESARS mark.
Respondent does not have any rights to or legitimate interests in the <littleceasars.com> domain name.
Respondent registered and uses the <littleceasars.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in its LITTLE CAESARS
mark under Policy ¶ 4(a)(i) based on Complainant’s
trademark registration with the USPTO.
Respondent’s <littleceasars.com> domain name is
confusingly similar to Complainant’s mark.
The domain name merely removes the space separating the terms of the
mark and adds the generic top-level domain (“gTLD”) “.com.” These differences fail to distinguish a
domain name from a complainant’s mark for purposes of the Policy. See Bond
& Co. Jewelers, Inc. v.
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
Respondent’s domain name also transposes the letters “e” and “a” to create a common misspelling of Complainant’s LITTLE CAESARS mark. In Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002), and Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005), panels found that transposing letters in a mark in forming a domain name fails to distinguish a contested domain name from a complainant’s mark.
The Panel therefore concludes that Respondent’s <littleceasars.com> domain name is confusingly similar to Complainant’s LITTLE CAESARS trademark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <littleceasars.com> domain name. Once a complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a contested domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have rights to or legitimate interests in that domain name).
Complainant has made out a prima facie case on the points of Respondent’s lack of rights and interests. Owing to Respondent’s failure to respond to the Complaint, we are entitled to presume that Respondent does not have rights to or legitimate interests in the <littleceasars.com> domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that:
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.
Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that
Respondent is not commonly known by the <littleceasars.com> domain
name. Moreover, the pertinent WHOIS
information identifies the domain name registrant only as “Nelson, Rex,” which does not resemble the <littleceasars.com>
domain name. Complainant further contends,
without objection from Respondent, that Respondent is not authorized or
licensed to use Complainant’s LITTLE CAESARS mark. On this record, we are constrained to
conclude that Respondent is not commonly known by the <littleceasars.com>
domain name so as to have demonstrated that it has rights to or legitimate
interests in the contested domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact
that “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” is a 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 a respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name where that respondent was not authorized to register domain names
featuring a complainant’s mark and failed to submit evidence that it was
commonly known by a disputed domain name).
We also observe that there is no dispute as to Complainant’s assertion that Respondent’s <littleceasars.com> domain name resolves to a website containing a link to a website that features links to Complainant’s competitors in the pizza industry or that the resolving website also contains a link that resolves to a website for Respondent’s unrelated fireworks business. In the circumstances here presented, we may comfortably presume that Respondent benefits financially from the visits of Internet users to the links to Complainant’s competitors through the receipt of click-through fees as well as from sales of fireworks made at the last-mentioned resolving website. Respondent’s use of the disputed domain in this manner 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 Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to that respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a contested domain name pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
There is no dispute in the record that Respondent uses the <littleceasars.com> domain name to resolve to a website that includes a link labeled “LOOKING FOR PIZZA CLICK HERE,” and that, upon clicking on the hyperlink, Internet users are taken to a website containing links to Complainant’s competitors in the pizza industry. Respondent’s use of the contested disputed domain name to host inks to the websites of Complainant’s competitors constitutes for Respondent’s presumed financial gain is evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). 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 links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain 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 a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
Besides providing hyperlinks to Complainant’s competitors,
Respondent also provides a hyperlink to Respondent’s unrelated fireworks
business on the website resolving from the <littleceasars.com>
domain name. Respondent presumably benefits
commercially from the sales of fireworks at the resolving website. Respondent’s use of the contested domain name
in this manner likely causes confusion among Internet users as to the
possibility of Complainant’s sponsorship of the disputed domain name and
resolving website. This is further
evidence that Respondent’s use of the <littleceasars.com> domain
name constitutes bad faith registration and use of the domain pursuant to
Policy ¶ 4(b)(iv).
See
Respondent is using the disputed domain name
to operate a website which features links to competing and non-competing
commercial websites from which Respondent presumably receives referral
fees. Such use for Respondent’s own
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).
See also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that a respondent registered and used a domain name in bad faith pursuant to Policy ¶ 4(b)(iv) where that respondent was using the domain name to attract Internet users to its commercial website).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the disputed <littleceasars.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 6, 2010
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