Tower Research Capital, LLC, managing member of Limestone Trading, LLC v. linhong
Claim Number: FA1009001349302
Complainant is Tower Research Capital, LLC, managing member of Limestone Trading, LLC (“Complainant”), represented by Enoch Liang of Lee Tran & Liang, APLC, California, USA. Respondent is linhong (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fxlimestone.com>, registered with Xin Net Technology Corporation.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2010; the National Arbitration Forum received payment on September 29, 2010«DateHardCopy». The Complaint was submitted in both Chinese and English.
On November 15, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <fxlimestone.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 17, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese Language Written Notice of the Complaint, setting a deadline of December 7, 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@fxlimestone.com. Also on November 17, 2010, the Chinese language 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 December 8, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <fxlimestone.com> domain name is confusingly similar to Complainant’s LIMESTONE TRADING mark.
2. Respondent does not have any rights or legitimate interests in the <fxlimestone.com> domain name.
3. Respondent registered and used the <fxlimestone.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Tower Research Capital LLC, managing member of Limestone Trading LLC, produces evidence that it has rights in the LIMESTONE TRADING mark. Complainant uses its mark in connection with its financial services business, which includes: commodity and bond trading services, managed futures advisory and management services and futures commission merchant services. Complainant indicates that it has operated under the LIMESTONE TRADING mark since 2000.
Respondent, linhong, registered the <fxlimestone.com> domain name on February 6, 2009. The disputed domain name resolves to a website displaying large amounts of information about Complainant’s business and purporting to offer the same services as 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, Tower Research Capital LLC, managing member of Limestone Trading LLC, has filed, and is awaiting approval, of a federal trademark for the LIMESTONE TRADING mark. However, previous panels have determined that a federal trademark registration is not required so long as the complainant can establish common law rights through proof of sufficient secondary meaning associated with the mark pursuant to 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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant uses the LIMESTONE TRADING mark in connection with its financial service, and commodities and bonds trading business. Complainant contends that it has traded “several million contracts” on various exchanges since the year 2000. Limestone Trading LLC was established as a Delaware Limited Liability Company as of April 5, 2000. Complainant has also filed for trademark registration with the United States Patent and Trademark Office (“USPTO”) for its LIMESTONE TRADING mark. In light of this information, the Panel finds Complainant has provided sufficient evidence to establish common law rights in the LIMESTONE TRADING mark through its extensive commercial use, predating Respondent’s registration of the disputed domain name and pursuant to Policy ¶ 4(a)(i). See 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); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant contends Respondent’s <fxlimestone.com> domain name is confusingly similar to Complainant’s LIMESTONE TRADING mark. The disputed domain name contains Complainant’s LIMESTONE mark, removes the word TRADING, adds the letters “fx” which Complainant contends is a term descriptive of its business, and adds the generic top-level domain (“gTLD”) “.com.” Earlier panels have asserted that the removal of a word from a complainant’s mark and the addition of a gTLD may still render a disputed domain name confusingly similar to said mark. Previous panels have also shown that the addition of indiscriminate letters to a complainant’s mark do not sufficiently distinguish the disputed domain name from the mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds <fxlimestone.com> domain name to be confusingly similar to Complainant’s LIMESTONE TRADING mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not have rights and legitimate interests in the <fxlimestone.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, then the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has made a prima facie case. Due to Respondent’s failure to respond to the complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <fxlimestone.com> domain name. 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). Nonetheless, the Panel will examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
When there is no evidence set forth in the record to suggest that a respondent is commonly known by a disputed domain name, previous panels have found such as an indication that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). Such is the case in this instance. Complainant asserts that Respondent is not authorized to use the LIMESTONE TRADING mark. The WHOIS information identifies the domain name registrant as “linhong.” There is no other indication to show that Respondent has been commonly known by the <fxlimestone.com> domain name. Therefore, the Panel finds Respondent has not established rights or legitimate interests in the disputed domain name under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent uses the <fxlimestone.com> domain name in an attempt to pass itself off as Complainant by providing official information relating to Complainant, as well as, offering the same services as Complainant’s business. The Panel finds that this 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 Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the disputed domain name in direct competition with Complainant. The <fxlimestone.com> domain name offers services identical to that of Complainant, and Complainant provides evidence that their own customers have been confused when they attempted to use Respondent’s services when they thought it was Complainant’s website. The Panel finds that this to be a competing use and a disruption of Complainant’s business which is in bad faith pursuant to Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Respondent registered and is using the <fxlimestone.com> domain name, which is confusingly similar to Complainant’s LIMESTONE TRADING mark, in an attempt to create confusion with Internet users. Internet users are likely to misunderstand an affiliation or sponsorship between Complainant and the disputed domain name, which likely results in a profit for Respondent. The Panel finds Respondent’s attempt to commercially gain by its creation of confusion is in bad faith pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
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 <fxlimestone.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 20, 2010
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