national arbitration forum

 

DECISION

 

Tower Research Capital, LLC, managing member of Limestone Trading, LLC v. Limestone

Claim Number: FA 1349315

 

PARTIES

 

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 Limestone (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <fxlmst.com>, registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2010; the National Arbitration Forum received payment on September 29, 2010.  Complainant submitted the Complaint in both the Chinese and English languages.

 

On November 17, 2010, Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn confirmed by e-mail to the National Arbitration Forum that the <fxlmst.com> domain name is registered with Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn and that Respondent is the current registrant of the name.  Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn has verified that Respondent is bound by the Beijing Innovative Linkage Technology Ltd. d/b/a dns.com.cn 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 19, 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 9, 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@fxlmst.com.  Also on November 19, 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 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

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 <fxlmst.com> domain name is confusingly similar to Complainant’s LIMESTONE TRADING mark.

 

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

 

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

 

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

 

FINDINGS

 

Complainant, Tower Research Capital, LLC, managing member of Limestone Trading, LLC, has been in the business of international trading in reference to bond futures, soft agricultural futures, energy futures, index futures and interest rate futures since the year 2000.  Complainant has continuously and extensively used the LIMESTONE TRADING mark in commerce since it first became a Limited Liability Company on April 5, 2000.

 

Respondent, Limestone, registered the <fxlmst.com> domain name on May 25, 2009.  Respondent’s disputed domain name resolves to a website that appears to be that of Complainant and which appears to allow Internet users to set up bank accounts and other trading related information while using Complainant’s business name and association numbers prominently throughout the website.

 

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 does not own a trademark registration with the United States Patent and Trademark Office ("USPTO") for its LIMESTONE TRADING mark.  However, previous panels have decided that a lack of trademark registration does not preclude a complainant from establishing rights in its mark under Policy ¶ 4(a)(i).  Rather, previous panels have determined that a trademark registration is unnecessary if the respective complainant has provided sufficient evidence to show that it has common law rights in its mark.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); 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).  This Panel agrees with such an approach in cases such as the present action where no trademark registrations have been presented to the Panel. 

 

Complainant has alleged and provided evidence to show that it has been in the business of futures trading since its first registered itself as a limited liability company with the state of Delaware on April 5, 2000.  Complainant contends that it has traded under several million contracts since that date on various exchanges worldwide, and that it has done so extensively and continuously since the year 2000 all the while using the LIMESTONE TRADING mark to effectuate all such trading.  Complainant further notes that it applied for and was approved to operate and conduct business in the state of New York, USA on May 19, 2006.  On September 18, 2007 Complainant was approved and registered by the National Futures Association, which is an industry wide self-regulatory organization for the United States futures industry.  Complainant is also listed with the United States Futures Trading Commission, which is a government organization that regulates commodity futures and option markets within the United States.   The Panel finds that Complainant has provided sufficient evidence to establish common law rights in its LIMESTONE TRADING mark under Policy ¶ 4(a)(i) dating back to April 5, 2000.  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 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).

 

Complainant contends that the <fxlmst.com> domain name is confusingly similar to Complainant’s LIMESTONE TRADING mark.  Complainant argues that the string of letters “lmst” is an abbreviation for the LIMESTONE portion of its mark, while the letter string “fx” is an abbreviation for the phrase, “foreign exchange market.”  Complainant argues that Respondent’s use of an abbreviation for the dominant portion of its mark coupled with an abbreviation of a term that describes Complainant’s trading business renders the domain name confusingly similar to Complainant’s mark.  The Panel agrees and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i), where the domain name encompasses an abbreviation of the dominant portion of Complainant’s mark while adding an abbreviation of a descriptive term as well as the generic top-level domain (“gTLD”) “.com.”  See Algemeen Nederlands Persbureau ANP B.V. v. European Travel Network, D2004-0520 (WIPO Sept. 8, 2004) (finding confusing similarity where “[d]istinctive elements of the Complainant’s marks, notably the acronym ANP, are reproduced entirely in the domain name.”); see also 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);  Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not  have any rights and legitimate interests in the <fxlmst.com> domain name.  Complainant is required to make a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed 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 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 produced a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <fxlmst.com> domain name.  See American 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.”)The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

 

The WHOIS information for the disputed domain name identifies “Limestone” as the registrant, and Respondent has not come forward with any evidence indicating that it is commonly known by the disputed domain name.  Therefore, the Panel finds that, although Respondent appears to be known by the disputed domain name, there is no evidence in the record that Respondent was ever commonly known by the domain name prior to its registration.   See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).

 

Complainant contends that Respondent is using the disputed domain name to resolve to a website that is meant to appear as though it is Complainant’s website.  Complainant submits screen-shot evidence to show that Respondent uses Complainant’s company name and LIMESTONE TRADING mark prominently throughout the website, while also using Complainant’s association identity numbers.  Complainant further argues that Respondent provides information on futures trading as if it were Complainant in order to entice Internet users into setting up banking and holding accounts with Respondent under the guise of Complainant’s mark.  The Panel finds that Respondent’s use of the disputed domain name to operate a website that appears to be that of Complainant 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 American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); 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 that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant has alleged that Respondent is using the disputed domain name to induce Internet users into creating bank accounts as well as other trading accounts under the guise that such accounts are being created with Complainant’s company.  The Panel infers that such use of a confusingly similar domain name results in commercial gain for Respondent through such activity as described above.  Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

Complainant has argued, and the Panel has found, that Respondent is using the disputed domain name to pass itself off as Complainant by using Complainant’s business name, mark, and association numbers while providing information on futures trading.  Complainant alleges that such passing off is also evidence that Respondent registered and is using the disputed domain name in bad faith.  The Panel agrees and finds that Respondent’s attempt to pass itself off as Complainant is evidence of Respondent’s registration and use of the domain name in bad faith under Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients.  Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).

 

The Panel finds that 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 <fxlmst.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  December 22, 2010

 

 

 

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