Lomont Molding, Inc. v.
Claim Number: FA0802001144231
PARTIES
Complainant is Lomont Molding, Inc. (“Complainant”), represented by Timothy
J. Zarley, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lomontmolding.com>, registered with Compana, LLC.
PANEL
Each of the undersigned Panelists 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On February 14, 2008, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <lomontmolding.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On February 25, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 17, 2008 by which
Respondent could file a Response to the Complaint, was transmitted to Respondent
via e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@lomontmolding.com by e-mail.
A timely Response was received and determined to be complete on March 17, 2008.
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is an
Complainant relies on its rights as the
registered owner of U.S. Trademark Registration No. 3,165,040 LOMONT MOLDING,
registered in international class 40, in respect of “custom manufacture of
structural foam and injection molded signs.” Complainant submits that it has continuously
used said trademark in commerce since its claimed first use on December 31,
1983. Complainant further submits that
the domain name in dispute is identical to Complainant’s trademark in sound, sight
and appearance.
Complainant submits that Respondent has no
rights or legitimate interests in the domain name at issue. Complainant knows of no use by Respondent of
the name LOMONT MOLDING other than on the website established at the address of
the domain name in dispute.
Complainant submits that Respondent first used
the domain name for its website on
Complainant has exhibited a print out of the
website established by Respondent at the website to which the domain name at
issue resolves and submits that the content of the website demonstrates that
the domain name at issue is being used by Respondent for a commercial purpose.
Complainant submits that Respondent is a known
cybesquatter that has shown a pattern of behaviour of continuous attempts to
cash in on others’ businesses. In
support of this assertion Complainant has submitted a copy of an article
published on May 24, 2007 in The Dallas Morning News that Respondent lost
twelve domain name disputes through the National Arbitration Forum since April
2, 2007 including one dispute taken by Exxon Mobil Corporation.
Complainant has submitted a sample of cases
involving Respondent that it alleges demonstrates a systematic pattern of
cybersquatting by Respondent.
In particular Complainant cites Aetna
Inc. v. Compana L.L.C., FA 330494,
(Nat. Arb. Forum, Nov. 20, 2004), in which, notwithstanding
the affidavit filed by the respondent, the majority decision refused to accept
the respondent’s averment that it had no knowledge of the complaint’s rights
because of the respondent’s knowledge
in acquiring domain names, its utilization of same and its experiences in
domain name disputes.
Complainant submits that as found in
Finally, Complainant submits that as a final
indication of bad faith by Respondent, Complainant attempted in good faith to
contact the President of Respondent concerning this dispute but received no
response.
B. Respondent
Respondent
agrees to the relief requested by the Complainant and will, upon order of the
Panel, do so. This is not an admission
to the three elements of 4(a) of the Policy but rather an offer of “unilateral
consent to transfer” as prior panels have deemed it.
Respondent cites Cartoon Network LP,
LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006) where in similar circumstances the panel noted
that it could proceed in the following ways:
(i)
to grant
the relief requested by the Complainant on the basis of the Respondent’s
consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v.
EZ-Port, D2000-0207
(WIPO May 8, 2000); see also Slumberland
France v. Chadia Acohuri, D2000-0195 (WIPO June 14, 2000));
(ii)
to find
that consent to transfer means that the three elements of paragraph 4(a)
are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina
Corp. v. Qosmedix Group,
D2003-0620 (WIPO Nov. 10, 2003); see
also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Jan. 19, 2001)); and
(iii)
to proceed to consider whether on the evidence
the three elements of paragraph 4(a) are satisfied because the
Respondent’s offer to transfer is not an admission of the Complainant’s right (see Koninklijke
Philips Electronics N.V. v. Manageware, D2001-0796 (WIPO Oct. 15, 2001)) or
because there is some reason to doubt the genuineness of the Respondent’s
consent (see Société Française du Radiotéléphone-SFR v. Karen, D2004-0386 (WIPO July 22, 2004); see also Eurobet UK Ltd. v. Grand Slam Co, D2003-0745 (WIPO Dec. 17, 2003)).
Respondent noted that in Cartoon Network LP, LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006) the panel, conscious of Rule 10(c)’s caution for “due expedition” decided that the best and most expeditious course was that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course.” (citing from Williams-Sonoma, Inc. v. EZ-Port, D2000-0207 (WIPO May 5, 2000)).
FINDINGS
1.
Complainant is an
2.
Complainant is the registered owner of U.S. Trademark
Registration No. 3,165,040 LOMONT MOLDING, registered in international class
40, in respect of “custom manufacture of structural foam and injection molded
signs” and has continuously used said trademark in commerce since its claimed
first use on December 31, 1983.
3.
Respondent is engaged in the business of registering
domain names and hosting web sites and has engaged in a pattern of registering
and using domain names that are identical or confusingly similar to trademarks
owned by third parties in which Respondent has no rights.
4.
The registration of the domain name <lomontmolding.com> by Respondent is part of that pattern and Respondent
registered and is using said domain name as the address of a website in order
to take unauthorised and predatory advantage of Complainant’s goodwill in the
trademark LOMONT MOLDING.
5.
The domain name <lomontmolding.com> is identical to the
trademark LOMONT MOLDING in which Complainant has rights.
6.
Respondent has no rights or legitimate interest in said
domain name.
7.
Respondent has registered and is using said domain name in
bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
This Panel has considered Respondent’s submissions and noted that
Respondent is consenting to the transfer of the domain name at issue to
Complainant. This Panel has also considered in particular the submissions made
by Respondent in relation to how it should proceed and notes the comments of
the learned panel in Cartoon Network LP, LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006).
Having given the matter due consideration, this Panel is of the view
that it should proceed to consider Complainant’s application on its merits.
This Panel accepts Complainant’s submission
that the domain name at issue <lomontmolding.com> is identical to the trademark LOMONT MOLDING in which
Complainant has rights.
Complaiant has therefore
satisfied the first element of the test in paragraph 4(a) of the Policy.
Rights
or Legitimate Interests
Complainant’s allegations as to rights or
legitimate interests are sufficient to shift the burden of production to
Respondent, although Complainant ultimately bears the burden of proof on this
and all other elements required by the Policy.
See, e.g., Royal
Bank of Scot. Group plc v.
Respondent has neither responded to
Complainant’s allegations in this regard nor come forward with any evidence of
rights or legitimate interests.
In the circumstances this Panel is satisfied
that Complainant has met its burden of proof in establishing the second element of the test in paragraph
4(a) of the Policy also. See Int’l Lutheran Laymen's League v.
Complainant has provided evidence that
Respondent has used the domain name in dispute as the address of a website
established by Respondent for commercial purposes. Complainant has also demonstrated that
Respondent has engaged in a pattern of activity whereby it has engaged in
cybersquatting by registering and using domain names that are identical or
confusingly similar to third party trademarks to take predatory advantage of
the third parties’ rights for commercial purposes.
On the balance of probabilities, given the
unique combination of the two elements “lomont” and “molding” in both the
trademark and the domain name at issue, it is clear that Respondent was
actually aware of Complainant’s trademark rights when the domain name was
chosen and used by Respondent as a domain name and website address. Respondent clearly chose and registered the
domain name <lomontmolding.com> in
order to take unauthorised, predatory advantage of the goodwill that
Complainant has established in its LOMONT MOLDING trademark.
This Panel is therefore satisfied that
Respondent intentionally attempted to attract, for commercial gain, Internet
users to its web site or other on-line location, by creating a likelihood of
confusion with Complainant's mark as to the source, sponsorship, affiliation,
or endorsement of Respondent’s web site and it follows that Respondent
registered and is using said domain name in bad faith.
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 <lomontmolding.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated: April 3, 2008
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