Life Extension Foundation, Inc v. Peter Green d/b/a NDP media CORP
Claim Number: FA1102001370517
Complainant is Life Extension Foundation, Inc (“Complainant”), represented by Darren Spielman of Kain & Associates, Attorneys at Law, P.A., Florida, USA. Respondent is Peter Green d/b/a NDP media CORP (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lef.co>, 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2011; the National Arbitration Forum received payment on February 1, 2011.
On February 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lef.co> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 23, 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@lef.co. Also on February 3, 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 February 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
Initial Background information:
Life Extension Foundation, Inc. (known by its trade name “LEF”) is the world's largest organization dedicated to finding scientific methods for addressing disease, aging and death. Anti-aging counseling, health advice and products have been key components of LEF’s business as far back as 1980. Incorporated in 1977, LEF is a non-profit corporation that funds pioneering scientific research aimed at achieving an indefinitely extended healthy human lifespan. Various related companies license LEF’s trademarks in order to benefit from LEF’s long-standing reputation with consumers worldwide, as well as the professional medical community.
LEF and its licensees market and sell a wide range of goods and services including, but not limited to, (a) online retail store service outlets; (b) retail pharmacy services; (c) dietary and nutritional supplements; (d) magazines, books, brochures and leaflets related to health and nutrition; (e) retail store services featuring nutritional and dietary supplements and books and magazines related to health and nutrition; (f) mail order catalog services featuring nutritional and dietary supplements and books and magazines related to health and nutrition; and (g) online retail store services featuring nutritional and dietary supplements and books and magazines related to health and nutrition.
As detailed above, LEF is the owner of a family of trademarks relating to its LIFE EXTENSION brand. LEF maintains over 100 domain names as well as various active web sites such as www.LEF.org, www.LEF.com, www.LifeExtensionFoundation.org, www.LifeExtension.com, www.LifeExtensionRetail.com, www.LifeExtensionRX.com, and others. The Life Extension Foundation Buyer’s Club, Inc. (“LEFBC”) is a for-profit corporation and licensee of LEF which sells vitamins and other nutritional supplements under the LEF brand name and using LEF’s trademarks.
Life Extension is a monthly magazine first published in 1994 which is currently circulated to a world-wide audience of hundreds of thousands persons and professional organizations. It delivers up-to-date coverage of the latest scientific and medical breakthroughs from around the world. LEF receives requests to reprint articles from Life Extension from all over the world and the articles are frequently republished worldwide both in print and on the Internet.
In addition, LEF licenses certain trademarks to Life Extension Pharmacy, Inc., which operates a mail-order pharmacy as well as a retail pharmacy store in Florida and to Life Extension Nutrition Center, Inc., which markets and sells a wide range of goods and services relating to anti-aging and longevity, including but not limited to vitamins, nutritional supplements, magazines and books at a retail store in Florida. LEF also provides grants to conduct research in the field of anti-aging and provides counseling in the field of nutrition.
LEF’s international reach is also vast and dedicated. LEF obtained an international Madrid Protocol registration for its LIFE EXTENSION mark. LEF maintains its global trademark position with respect to its LIFE EXTENSION marks including registrations and applications in Mexico, Japan, Europe (a Community Trademark Registration), Canada, Brazil, China, and Singapore, among others. See Brazilian Trademark Application Nos. 830.560.300; 830.560.297; 830.560.319; 830.560.319; Canadian Application No. 1326629; Madrid International Reg. No. 907678; China International Reg. No. 907678; CTM (European) Registration - International Reg. No. 907678; Japan International Reg. No. 907678; Singapore Reg. Nos. T06/29026I, T06/29027G; Mexican Reg. No. 978103; Mexican Reg. No. 975441.
[a.] The Domain Name is confusingly similar to the LIFE EXTENSION Marks. ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i).
[i.] Complainant Life Extension Foundation, Inc. is also widely known by its tradename LEF and is the owner of <LEF.com> and <LEF.org>, among other domains all of which are redirected to LEF’s main domain at <LEF.org>. LEF has a family of LIFE EXTENSION related marks, and such federal trademark rights prove that Respondent’s domain is identical or confusingly similar to LEF’s marks. LEF’s rights to the family of LIFE EXTENSION and LEF marks are established through the federal registrations stated above, with common law and federally established rights dating back to 1980. See OpenTable, Inc. v. Web Brands, Inc. c/o WebBrands.com FA1163837 (Nat. Arb. Forum April 28, 2008) (“The Panel accepts also that the Complainant has prior rights in the OPEN TABLE trademarks, as the first use in commerce of these marks is 1999 as provided in the USPTO registrations.”); see also Blue Nile, Inc. v. blunile.com c/o Kevin Emanuel FA1269203 (Nat. Arb. Forum July 28, 2009) (Although the disputed domain was registered prior to Complainant filing date of the federal mark, Complainant established rights in the mark under Policy ¶4(a)(i) on the strength of its registration of the mark with the USPTO); National Construction Rentals, Inc. v. Toilets.com, Inc. (WIPO D2009-0147, March 18, 2009) (Trademark rights are established as of Complainant’s date of first use through a federal trademark registration). These several certificates of federal trademark registrations, and facts stated thereon (such as the date of first use of the marks) constitute prima facie evidence of the validity of the mark and the facts listed on the certificate. 15 U.S.C. §1057(b).
Previous Panels have already determined that the LIFE EXTENSION marks are valid, enforceable and even meet the secondary meaning threshold under the Policy.
“The Panel finds that Complainant has established rights in the LIFE EXTENSION MAGAZINE mark pursuant to Policy ¶4(a)(i) as of September 12, 1995 through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,774,262 issued October 21, 2003, filed September 12, 1995, date of first use October 1994)....The Panel agrees with Complainant’s [LEF] contention, and finds that Complainant [LEF] has established secondary meaning in the mark. The Panel further finds that Complainant [LEF] has established common law rights in the LIFE EXTENSION MAGAZINE mark as of October 1994 under Policy ¶4(a)(i)....The Panel finds this evidence compelling and, therefore, finds that Complainant has established secondary meaning in the mark [LIFE EXTENSION FOUNDATION]. The Panel finds that Complainant has established common law rights in the LIFE EXTENSION FOUNDATION mark pursuant to Policy ¶4(a)(i).”
See Life Extension Foundation, Inc. v. PHD Prime Health Direct Limited FA1289603 (Nat. Arbitration Forum, November 25, 2009)(emphasis added); see also Life Extension Foundation, Inc. v. Anti-Aging Corp. FA1346163 Nat. Arb. Forum November 15, 2010).
At a minimum, LEF’s trademark rights relate back to the filing date of its registrations. LEF’s LIFE EXTENSION MAGAZINE mark (Reg. No. 2,774,262) was filed in September 1995, which was fifteen (15) years prior to registration of the disputed domain. LEF was actively publishing its monthly magazine using the LIFE EXTENSION MAGAZINE mark for at least fifteen (15) years prior to the registration of the disputed domain. The LEF mark (Reg. No. 3,273,145) has a registration date of August 7, 2007, which was three (3) years prior to registration of the disputed domain.
LEF’s use of the marks has been established through continuous and extensive commercial use dating to 1980 under Policy ¶4(a)(i). Since Respondent registered the disputed domain in 2010, nearly 30 years after LEF began using the marks, this amount of time is abundantly sufficient to establish a distinctive mark and sufficient secondary meaning. 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); 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).
[ii.] Once LEF establishes its rights to the marks, the next question is whether the disputed domain is identical or confusingly similar to those marks. The disputed domain is identical and confusingly similar to LEF’s family of famous marks, and specifically to the LEF mark (Reg. No. 3,273,145). The use of a generic top-level domain (“gTLD”) namely, “.co” has been found to be not relevant in determining this factor. The disputed domain is confusingly similar to the LEF mark, because the disputed domain contains all of the mark.
As stated above, LEF sells drugs, vitamins, dietary supplements and nutritional supplements. As further evidence of the confusingly similar nature of the disputed domain, a review of the disputed domain shows that Respondent has a parked page with links to competitors, which are titled “Life Extension Vitamins.” This directly competes with LEF’s full range of pharmacy and anti-aging products, including dietary and nutritional supplements. See Express Servs., Inc. v. Express Temp, FA 103936 (Nat. Arb. Forum Feb. 22, 2002) (finding confusing similarity between the parties is increased because both offer similar services); Slep-Tone Entm’t Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that "likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry").
[b.] Respondent has no rights or legitimate interest in the domain. ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
[i.] Respondent’s use of the domain is not a bona fide offering of goods or services. Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”). See Canada Drugs.com Partnership, carrying on business as CanadaDrugs.com v. Domain Asia Ventures FA263171 (Nat. Arb. Forum, June 14, 2004) (“ Respondent’s use of a domain name that is confusingly similar to Complainant’s CANADA DRUGS and CANADADRUGS.COM marks to redirect users interested in Complainant’s products to a commercial website that offers identical pharmacy options and related services is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”)
[ii.] Respondent is not commonly known by the disputed domain name “LEF” as contemplated under Policy ¶4(c)(ii). The Whois information provided shows that Respondent is “Peter Green” d/b/a “NDP media CORP” Respondent, Peter Green, has nothing to do with LEF. Respondent is not a licensee of the LEF marks nor is authorized in any manner from LEF to use the marks. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); See also 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); 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); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark). RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
[iii.] Respondent’s use of the domain is clearly commercial and is not a legitimate noncommercial use or fair use manner of a domain. Respondent does not criticize Complainant’s company, goods or services in any manner. Respondent does not compare its competing goods or services to LEF’s goods or services. Respondent is not an authorized re-seller of LEF’s goods or services. Respondent’s use of the disputed domain is in competition with LEF. See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent’s “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use); National Construction Rentals, Inc. v. Toilets.com, Inc. (WIPO D2009-0147, March 18, 2009) (Respondent is using the Domain Name, which consists of Complainant’s registered trademark, to divert potential customers to Respondent’s competing website. This is not only likely to cause confusion as to whether the www.toilets.com website is affiliated with NATIONAL SANITATION, but it also is likely to disrupt Complainant’s business by diverting consumers away from Complainant and towards Respondent, which will inure to Respondent’s commercial gain.)
[iv] Respondent also has no rights or legitimate interests since the domain resolves to a parked page with links that likely provide click-through fees. See American Century Proprietary Holdings, Inc. v. Travis Martin, FA0905001262486 (Nat. Arb. Forum Jun. 23, 2009) (holding no rights or legitimate interests where domain name resolves to a parked website and Respondent presumably generates click-through fees from such use); see also, Genzyme Corp. v. Keyword Marketing, Inc., FA0706001007979 (Nat. Arb. Forum Jul. 17, 2007) (holding no rights or legitimate interests where domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites).
[v] Respondent also has no rights or legitimate interests in the domain since it is being offered for sale. A review of the subject domain shows that its states “Want to buy this domain? Our Domain Buy Service can help you get it.” Respondent’s offer to sell the <LEF.co> domain name provides further evidence that Respondent lacks rights or legitimate interests under Policy ¶4(a)(ii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name);Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
[c.] Respondent registered and is using the Domain Name in bad faith. ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
[i] Respondent selected the disputed domain name to disrupt LEF’s business for its own benefit in the marketplace, and therefore has registered and used the disputed domain name in bad faith under Policy ¶4(b)(iii). LEF has been selling drugs, anti-aging vitamins and nutritional supplements long before Respondent registered the disputed domain. Respondent does not use LEF as a trademark on any product, and does not use LEF anywhere in its literature or advertising. The only reason why the Respondent uses the disputed domain <LEF.co> is to disrupt LEF’s business. Respondent is using the disputed domain name to advertise competing business interests and related services. LEF’s business includes an online retail store outlets, and a retail pharmacy, selling drugs. By creating confusion around the LEF family of famous marks, Respondent is attempting to disrupt the LEF business.
[iii.] Respondent uses the confusingly similar domain in order to intentionally attract Internet users to its website and its other online location, namely <LEF.co> by creating a strong likelihood of confusion with LEF’s family of famous marks, in order to offer goods in direct competition with LEF, namely drugs, including anti-aging, dietary and nutritional supplements. These intentional acts are further evidence of bad faith. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Respondent has engaged in its use of the confusingly similar disputed domain name with the intent to profit from such use through its creation of a likelihood of confusion as to LEF’s affiliation with the disputed domain name. Respondent registered the domain name for commercial gain. Respondent’s domain name diverts Internet users wishing to search under LEF’s well-known family of famous LIFE EXTENSION marks to Respondent’s commercial website through the use of a domain name confusingly similar to LEF’s family of famous marks. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name, evidences bad faith registration and use pursuant to Policy ¶4(b)(iv).
Respondent’s current use of the Domain Name to resolve to a parked page containing click-through ads constitutes bad faith use and registration. Such use demonstrates Registrant’s intent to attract, for commercial gain, Internet users to Registrant’s web site by creating a likelihood of confusion with LEF’s Marks. See ICANN Policy ¶4(b)(iv). See Google Inc. v. Forum LLC, supra, FA0708001053323 (finding bad faith registration and use where <googlenews.com> “resolves to a commercial search engine website” generating “click-through advertising fees”); REO Speedwagon, Inc. v. Domain Administrator, FA0702000910799 (Nat. Arb. Forum Mar. 23, 2007) (bad faith use and registration found; domain name used to attract Internet users to generate “per click” revenue); State Farm Mut. Auto. Ins. Co. v. Haan, FA0703000948470 (Nat’l Arb. Forum May 9, 2007) (“The Panel finds that appropriating another’s mark to provide links to competitors is evidence of bad faith registration and use” where the domain name resolved to a “parked” page provided by the registrar for the domain name).
B. Respondent failed to submit a Response in this proceeding.
Complainant, Life Extension Foundation, Inc., is a non-profit corporation that funds scientific research aimed at achieving an indefinitely extended healthy human lifespan. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its LIFE EXTENSION (e.g., Reg. No. 3,394,959 issued March 11, 2008); LIFE EXTENSION FOUNDATION (e.g., Reg. No. 2,924,678 issued February 8, 2005); LIFE EXTENSION MAGAZINE (e.g., Reg. No. 2,774,262 issued October 21, 2003); and LEF marks (e.g., Reg. No. 3,273,145 issued August 7, 2007). Complainant also owns several trademark registrations with the European Union Office for Harmonization in the Internal Market (“OHIM”) for its LIFE EXTENSION mark (e.g., Reg. No. 907,678 issued November 21, 2006).
Respondent, Peter Green d/b/a NDP media CORP, registered the <lef.co> domain name on July 20, 2010. Respondent’s disputed domain name resolves to a parked website with the registrar <godaddy.com>, which displays third-party links to Complainant’s website as well as to the websites of Complainant’s competitors.
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 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.
The Panel finds Complainant has provided sufficient evidence to show it has rights in its LEF mark under Policy ¶4(a)(i) through its trademark registration of the mark with the USPTO (e.g., Reg. No. 3,273,145 issued August 7, 2007). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”); see also 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).
Complainant contends Respondent’s <lef.co> domain name is identical to Complainant’s LEF mark. The Panel notes the disputed domain name contains Complainant’s mark in its entirety while adding the country-code top-level domain (“ccTLD”) “.co” (the country code for Colombia). The Panel finds Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶4(a)(i). See Europcar Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶4(a)(i).”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”).
Even though the ccTLD involved is from Colombia, it is not necessary for Complainant to establish it has specific rights within Colombia. It is only necessary to establish Complainant has rights to the mark somewhere.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant alleges Respondent does not have any rights or legitimate interests in the <lef.co> domain name. Complainant is required to make a prima facie case in support of these allegations under Policy ¶4(a)(ii). Once the Complainant has produced a prima facie case the burden shifts to Respondent to show it has rights or legitimate interests in the disputed 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.”); see also 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 Policy ¶4(c)). The Panel finds Complainant has established a prima facie case. Due to the Respondent’s failure to respond to these proceedings the Panel may assume Respondent does not have any right or legitimate interest in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); 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.”). Nonetheless, this Panel will continue to evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the <lef.co> domain name under Policy ¶4(c).
Complaint argues Respondent is neither commonly known by the <lef.co> domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information identifies “NDP media CORP” as the registrant of the <lef.co> domain name, and there is no further evidence on record Respondent is commonly known by the disputed domain name. The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to 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 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).
Complainant contends Respondent’s disputed domain name resolves to the registrars website and features various third-party links to Complainant and its competitors. Complainant alleges Respondent benefits from receiving click-through fees for the links appearing on its resolving website. The Panel finds Respondent’s use of the 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 under Policy ¶4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with 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)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent selected the <lef.co> domain name to disrupt Complainant’s business for Respondent’s benefit. Complainant notes it was selling drugs, anti-aging vitamins and nutritional supplements before Respondent registered the disputed domain name, and Respondent’s posting of links to competing companies through its domain name is proof of bad faith registration and use. The Panel agrees and finds Respondent registered the domain name primarily to disrupt Complainant’s business and that such use is evidence of bad faith pursuant to Policy ¶4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant further argues Respondent’s disputed domain name resolves to a parked webpage containing click-through advertisements to Complainant’s website as well as to the websites of Complainant’s competitors. Complainant argues Respondent receives click-through fees in conjunction with its redirection of Internet users to such competing websites. The Panel finds Respondent’s use of the disputed domain name to display various third-party links to competing companies, as well as a link to Complainant’s company, is further evidence of Respondent’s bad faith registration and use of the domain name under Policy ¶4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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 finds Policy ¶4(a)(iii) 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 <lef.co> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: March 8, 2011
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