Tower Research Capital LLC, managing member of Limestone Trading LLC v. Zhang Mike KT / Limestone Trading
Claim Number: FA1009001349317
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 Zhang Mike KT / Limestone Trading (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <limestonetrading.us> and <limestonetrader.us> registered with KEY-SYSTEMS GMBH.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 29, 2010; the Forum received a hard copy of the Complaint on October 11, 2010.
On October 1, 2010, KEY-SYSTEMS GMBH confirmed by e-mail to the Forum that the <limestonetrading.us> and <limestonetrader.us> domain names are registered with KEY-SYSTEMS GMBH and that Respondent is the current registrant of the names. KEY-SYSTEMS GMBH has verified that Respondent is bound by the KEY-SYSTEMS GMBH registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 15, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 4, 2010 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.)as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <limestonetrading.us> domain name is identical to Complainant’s LIMESTONE TRADING mark.
Respondent’s <limestonetrader.us> domain name is confusingly similar to Complainant’s LIMESTONE TRADING mark
2. Respondent does not have any rights or legitimate interests in the <limestonetrading.us> or <limestonetrader.us> domain names.
3. Respondent registered and used the <limestonetrading.us> and <limestonetrader.us> domain names 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, namely, commodity and bond trading services. Complainant indicates that it has offered its services under the LIMESTONE TRADING mark since 2000.
Respondent, Zhang Mike KT / Limestone Trading, registered the <limestonetrading.us> domain name on April 9, 2010 and the <limestonetrader.us> domain name on March 30, 2010. The disputed domain names both resolve to websites which appear almost identical to Complainant’s business. Respondent displays Complainant’s address and contact information on every page of its site, and appears to try and represent itself as Complainant. The resolving website purports to offer services similar to those of 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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant, Tower Research Capital LLC, managing member of Limestone Trading LLC, has filed, but has not yet been approved, for a federal trademark for their LIMESTONE TRADING mark. Nevertheless, governmental trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). 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. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that UDRP ¶ 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, trading and commodities business. Complainant asserts that it has traded “several million contracts” on various exchanges since the year 2000. Limestone Trading LLC was established as a Limited Liability Company as of April 5, 2000. They have also filed, and are awaiting approval, for trademark registration with the United States Patent and Trademark Office for their LIMESTONE TRADING mark. In this instance, the Panel finds that Complainant has provided sufficient evidence to establish common law rights in its LIMESTONE TRADING mark through its extensive commercial use, predating Respondent’s registration of the disputed domain name, 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 Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Complainant contends that Respondent’s <limestonetrading.us> domain name is identical to Complainant’s LIMESTONE TRADING mark. The disputed domain name contains Complainant’s entire mark, merely removing the space in between the two words, and adds the country-code top-level domain (“ccTLD”) “.us.” Previous panels have found that the addition of a ccTLD and the removal of a space, render a disputed domain name identical to a complainant’s mark. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark). Therefore, the Panel finds Respondent’s <limestonetrading.us> domain name is identical to Complainant’s LIMESTONE TRADING mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <limestonetrader.us>
domain name is confusingly similar to Complainant’s LIMESTONE TRADING mark.
The disputed domain name contains Complainant’s mark, substituting an “er” for
the “ing,” removes the space between the words, and adds the ccTLD “.us.”
Previous panels have found that changing the final term of a mark is
insufficient in distinguishing the disputed domain name from a Complainant’s
mark. It has also been shown that the removal of a space and the addition of a
ccTLD do nothing to differentiate a famous mark from the domain name in
question. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug.
1, 2006) (concluding that the <classicmetalroofing.com> domain name was
confusingly similar to the complainant’s CLASSIC METAL ROOFS mark because
changing the final term of the mark from “roofs” to “roofing” was a minor
alteration and did not sufficiently distinguish the domain name from the mark);
see also Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum
Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE
DI KAPPA mark. The only difference is the omission of the space between the
words and the addition of the ccTLD “.us,” which does not significantly distinguish
the domain name from the mark.”).
Therefore, the Panel finds Respondent’s <limestonetrader.us>
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) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <limestonetrading.us> and <limestonetrader.us> domain names. Previous panels have found that once a complainant makes a prima facie case in support of its allegations, the burden then shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant makes a prima facie case. Because Respondent has failed to respond to the Complaint, the Panel may infer that Respondent does not have rights or legitimate interests in either the <limestonetrading.us> or <limestonetrader.us> domain names. See 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 UDRP ¶ 4(c)); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). Nevertheless, the Panel will still examine the record to determine whether or not Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <limestonetrading.us> or <limestonetrader.us> domain names. Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
The WHOIS information identifies the domain name registrant as “Zhang Mike KT / Limestone Trading.” However, Respondent failed to respond to the complaint and hence, has not provided sufficient evidence to show that Respondent is or was commonly known by the domain name prior to registration. Complainant maintains that Respondent is not authorized to use the LIMESTONE TRADING mark. Although Respondent appears to be known by the disputed domain name as set forth in the WHOIS information, there is no other evidence offered to indicate that Respondent is commonly known by the disputed domain name. The Panel finds that Respondent has not established rights or legitimate interests in either the <limestonetrading.us> or <limestonetrader.us> domain names pursuant to Policy ¶ 4(c)(iii). 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 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).
Respondent uses the <limestonetrading.us> or <limestonetrader.us> domain names in a nearly identical fashion to Complainant’s business use. The disputed domain names display address and telephone information of Complainant’s official business. Also included at the disputed domains is Complainant’s company information including; Complainant’s founder’s bio and information about other high ranking officers of the company, as well as, references to Complainant’s real National Futures Association number (“NFA”) (e.g., NFA 0382132). The Panel finds that this attempt by Respondent to pass itself off as Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See 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 [UDRP] ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Respondent uses the disputed domain name in an attempt to mislead Internet users who are likely searching for Complainant, but instead reach Respondent’s disputed domain, where it offers services that directly compete with Complainant. The Panel finds that this competing use is a disruption of Complainant’s business and is in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP]¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to [UDRP]¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent attempts to commercially gain by creating confusion with the disputed domain names that are confusingly similar to Complainant’s LIMESTONE TRADING mark. Internet users are likely to misunderstand any connection or sponsorship between Complainant and the disputed domain names. 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 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated UDRP ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant).
Respondent not only displays Complainant’s mark at the disputed domain names, but it also provides official contact and company information regarding Complainant’s business. The Panel finds that this is an attempt by Respondent to pass itself off as Complainant and is in bad faith pursuant to 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 Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the [UDRP].”).
The Panel finds Policy ¶ 4(a)(iii) is 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 <limestonetrading.us> and <limestonetrader.us> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 17, 2010
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