Jonden Manufacturing Co., Inc. v. Domain Name Proxy, LLC
Claim Number: FA1101001366075
Complainant is Jonden Manufacturing Co., Inc. (“Complainant”), represented by Robert S. Broder, P.C., New York, USA. Respondent is Domain Name Proxy, LLC (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lindaleal.com>, registered with Basic Fusion.
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 January 4, 2011; the National Arbitration Forum received payment on January 4, 2011.
On January 4, 2011, Basic Fusion confirmed by e-mail to the National Arbitration Forum that the <lindaleal.com> domain name is registered with Basic Fusion and that Respondent is the current registrant of the name. Basic Fusion has verified that Respondent is bound by the Basic Fusion 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 January 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2011 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@lindaleal.com. Also on January 5, 2011, 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 January 27, 2011 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 <lindaleal.com> domain name is identical to Complainant’s LINDA LEAL mark.
2. Respondent does not have any rights or legitimate interests in the <lindaleal.com> domain name.
3. Respondent registered and used the <lindaleal.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Jonden Manufacturing Co., Inc., holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its LINDA LEAL mark (Reg. No. 2,321,279 issued February 22, 2000) which it uses in connection with women’s clothing.
Respondent registered the <lindaleal.com> domain name on August 23, 2007. The disputed domain name resolves to a directory website containing hyperlinks to third-parties that compete with Complainant in the clothing industry.
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.
Previous panels have determined that a trademark registration with a federal trademark agency is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Complainant holds a trademark registration with the USPTO, a federal trademark authority, for its LINDA LEAL mark (Reg. No. 2,321,279 issued February 22, 2000). Therefore, the Panel holds that Complainant has established rights in its LINDA LEAL mark pursuant to Policy ¶ 4(a)(i).
Past panels have held that a disputed domain name remains identical to a complainant’s mark if the only difference between the two is the removal of a space and the addition of a generic top-level domain (“gTLD”). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Respondent’s <lindaleal.com> domain name incorporates Complainant’s entire LINDA LEAL mark and simply removes the space between the terms of Complainant’s mark and adds the gTLD “.com.” Thus, the Panel concludes that Respondent’s <lindaleal.com> domain name is identical to Complainant’s LINDA LEAL mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <lindaleal.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient 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 disputed domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Prior panels have concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name. the complainant contends that it did not authorize the respondent to use its mark, and the respondent fails to present any evidence. 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 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). In this case, the WHOIS information is not similar to the <lindaleal.com> domain name. Complainant claims that it has not granted Respondent any license, permission, or authorization to use its LINDA LEAL mark. Respondent has failed to present any evidence, and the Panel fails to find any evidence in the record, that Respondent is commonly known by the disputed domain name. Consequently, the Panel finds that Respondent is not commonly known by the <lindaleal.com> domain name under Policy ¶ 4(c)(ii).
Past panels have found that a respondent’s use of a disputed domain name 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) if the respondent uses the disputed domain name to operate a commercial hyperlink website with hyperlinks to the complainant’s competitors. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)). In the case at hand, Respondent uses the <lindaleal.com> domain name to operate a directory website containing hyperlinks to Complainant’s competitors in the women’s clothing industry. Based on the precedent established by past panels, this Panel holds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Previous panels have held that a respondent’s registration and use are evidence of bad faith under Policy ¶ 4(b)(iii) if the respondent’s disputed domain name resolves to a website containing hyperlinks to the complainant’s competitors. 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 commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent’s <lindaleal.com> domain name resolves to a directory website featuring hyperlinks to Complainant’s competitors in the women’s clothing industry. Internet users interested in Complainant’s business may instead purchase women’s clothing from a competitor due to Respondent’s use of the disputed domain name. Therefore, the Panel determines that Respondent’s use of the <lindaleal.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iii).
Prior panels have determined that a respondent’s attempt to profit from Internet user’s confusion by hosting a website featuring pay-per-click hyperlinks to a complainant’s competitors is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). Respondent uses its <lindaleal.com> domain name to resolve to a website that contains hyperlinks to Complainant’s competitors in the women’s clothing industry. The Panel infers that Respondent receives click-through fees from the aforementioned hyperlinks. Internet users may become confused as to Complainant’s affiliation with the disputed domain name due to Respondent’s use of the identical disputed domain name. Thus, the Panel concludes that Respondent’s use of the <lindaleal.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
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 <lindaleal.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 8, 2011
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