LD Products, Inc. v. Denholm Borg
Claim Number: FA1007001333640
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 <123inmjets.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 July 2, 2010.
On July 6, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <123inmjets.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 July 7, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@123inmjets.com by e-mail. Also on July 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 August 3, 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 <123inmjets.com> domain name is confusingly similar to Complainant’s 123INKJETS mark.
2. Respondent does not have any rights or legitimate interests in the <123inmjets.com> domain name.
3. Respondent registered and used the <123inmjets.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LD Products, Inc. d/b/a 123Inkjets.com, was founded in 1999 and is an Internet retailer of printer supplies and accessories. Complainant contends that it has marketed and sold products and services under the 123INKJETS mark since it was founded. Further, Complainant alleges that it has devoted large of amounts of effort and money to promoting and advertising its mark. Complainant also owns trademark registrations with the United States Patent and Trademark Office ("USPTO") for its 123INKJETS mark (e.g., Reg. No. 3,212,566 filed October 6, 2005; issued February 27, 2007).
Respondent, Denholm Borg, registered the <123inmjets.com> domain name on October 19, 2004. Respondent’s disputed domain name resolves to a parking website which displays various third-party hyperlinks to businesses and websites that are unrelated to Complainant.
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 submits evidence to show that it owns trademark
registrations with the United States Patent and Trademark Office
("USPTO") for its 123INKJETS mark (e.g., Reg. No. 3,212,566 filed October 6, 2005; issued February 27,
2007). However, the Panel finds that
Respondent’s registration of the <123inmjets.com> domain name took
place on October 19, 2004, thus predating Complainant’s trademark rights in its
mark. Previous panels have decided that
trademark registrations are not necessary to establish rights in a mark under
Policy ¶ 4(a)(i) if complainant can establish common
law rights in the mark, and so this Panel finds. 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 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).
Complainant alleges
that it was founded in 1999 under the 123INKJETS name and mark and has been
operating continuously under such mark since then. Further, Complainant alleges that is has
spent significant amounts of money on advertising and marketing its mark and
brand to consumers and businesses throughout the
Complainant contends that the <123inmjets.com> domain name is simply a misspelled version of its mark by replacing the letter “k” of its mark with the letter “m” in the domain name. Further, Complainant argues that the addition of the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish the domain name from Complainant’s mark. The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s 123INKJETS 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 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 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 rights and legitimate interests in the <123inmjets.com> domain name pursuant to Policy ¶ 4(a)(ii). UDRP precedent is clear that Complainant must first make a prima facie case in support of its allegations, and then the burden of proof will shift to Respondent to show it does have rights and legitimate interests in the 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.”). The Panel finds that Complainant has established a prima facie case in support of its allegations and the burden has properly been transferred to Respondent. The Panel further finds that Respondent’s failure to provide a response to these proceedings allows the Panel to assume that Respondent does not have rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See 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.”). However, the Panel will evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the <123inmjets.com> domain name pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent is not, and has never been, known by the <123inmjets.com> domain name, and that Respondent is not authorized or licensed to use Complainant’s 123INKJETS mark. The WHOIS information for the <123inmjets.com> domain name identifies “Denholm Borg” as the registrant, thereby supporting the Panel’s finding that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); 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 argues that the <123inmjets.com> domain name resolves to a parked website which displays third-party hyperlinks to direct competitors of Complainant. However, Complainant has provided screen shot evidence of Respondent’s resolving website that displays third-party links to airline tickets, baseball and NASCAR racing tickets, and various other entertainment or travel tickets. The Panel finds that the links displayed on Respondent’s website to several unrelated companies and websites without other content does not amount to 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 Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel also finds that Respondent’s registration and use of the <123inmjets.com> domain name is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii). By using a commonly misspelled version of Complainant’s 123INKJETS mark Respondent has engaged in typosquatting, a practice of which previous panels have determined to show a lack of rights and legitimate interests under Policy ¶ 4(a)(ii), and so this Panel finds. 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)(ii) has been satisfied.
Complainant argues that Respondent is using the <123inmjets.com> domain name to confuse Internet users into believing that Complainant is affiliated with the website resolving from the domain name. Complainant submits screen shot evidence indicating that Respondent is using the disputed domain name to profit from click-through fees it receives from the unrelated businesses advertised and linked to on Respondent’s website. The Panel finds that Respondent is using the domain name to intentionally attract Internet users to its website for commercial gain, and that such use is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also 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)).
The Panel has already determined that Respondent’s registration and use of the <123inmjets.com> domain name constitutes typosquatting. Previous panels have determined that registration and use of a misspelled version of a trademark is evidence itself of bad faith registration and use under Policy ¶ 4(a)(iii), and so this Panel finds. 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 Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <123inmjets.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 9, 2010
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