LD Products, Inc. v. Whois Agent / Whois Privacy Protection Service, Inc.
Claim Number: FA1311001528680
Complainant is LD Products, Inc. (“Complainant”), represented by Virginia Sanderson of Kronenberger Rosenfeld, LLP, California, USA. Respondent is Whois Agent / Whois Privacy Protection Service, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ldproduct.com>, registered with GODADDY.COM, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his 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 November 6, 2013; the National Arbitration Forum received payment on November 7, 2013.
On November 7, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <ldproduct.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2013 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@ldproduct.com. Also on November 11, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 4, 2013, 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
The complaint is based on the trademark LD PRODUCTS, U.S. Registration No. 3,492,006, for use in connection with ink cartridges for printers and toner cartridges, as well as for use in connection with photo paper for ink and laser jet printers, in Classes 002 and 016.
FACTUAL AND LEGAL GROUNDS
Complainant LD Products, Inc., d/b/a ldproducts.com (“Complainant”) believes the privately registered <ldproduct.com> is being operated as a scam designed to confuse and defraud consumers who think they are purchasing quality ink and toner products from Complainant.
Complainant was founded in 1999. Complainant serves as one of the largest Internet retailers for printer supplies and accessories, distributing a wide range of products, including inkjet cartridges, laser toner cartridges and refill kits. Complainant’s website, <ldproducts.com>, was registered by Complainant on January 17, 2000.
Complainant has marketed and sold its products and services under the LD PRODUCTS mark since October 2007. On January 16, 2008, Complainant filed an application for the service mark LD PRODUCTS (hereinafter, the “Mark”) with the United States Patent and Trademark Office. The Mark was published for opposition on June 10, 2008, and was registered on August 26, 2008 (Registration No. 3,492,006). Complainant’s LD PRODUCTS mark is now among the most widely recognized brands in the Internet printer supplies industry. Complainant’s LD PRODUCTS mark became incontestable five years after the date of registration – August 26, 2013 – pursuant to the Lanham Act, 15 U.S.C. § 1065.
As an example, between 2012 and 2013, Complainant generated approximately $16.1M in revenue under the LD PRODUCTS mark. Complainant has also devoted extensive resources to advertising and marketing expenditures under the Mark, including but not limited to though pay-per-click marketing on Google and other major search engines, issuing press releases, and partnering with popular online coupon distributors.
Complainant has recently learned that Respondent has registered the <ldproduct.com> domain name (the “Disputed Domain”). Respondent registered the Disputed Domain on or about April 5, 2013—approximately five (5) years after Complainant began using the LD PRODUCTS mark. Importantly, the Disputed Domain consists of Complainant’s exact mark in its entirety, with the deletion of the letter “s,” and the addition of the generic top-level domain (gTLD) “.com.”
Moreover, the Disputed Domain resolves to a so-called “parked” website, which displays hyperlinks to direct competitors of Complainant. Through such hyperlinks, Respondent is earning significant revenue in the form of pay-per-click (PPC) commissions. As such, Complainant is benefitting from the goodwill associated with the LD PRODUCTS mark and thereby profiting at the expense of Complainant.
Complainant brings this ICANN UDRP complaint, requesting that ownership of the Disputed Domain be transferred to Complainant, pursuant to the following reasons:
A. The Disputed Domain Is Identical or Confusingly Similar To A Service Mark In Which The Complainant Has Rights. (UDRP § 4(a)(i))
(i) Complainant has rights to the Mark based on its Registration of the Mark as a Service Mark with the United States Patent and Trademark Office, which is now incontestable.
Registered Service Mark: LD PRODUCTS
The Complainant holds a registered service mark issued for the word LD PRODUCTS in the category of retail store services, featuring inkjets, laser toners, and computer related accessories, including paper, electronic media, and camera cards (USPTO Registration No. 3,492,006). Complainant first used the Mark in commerce in October 2007, and the registered mark consists of the standard word mark LD PRODUCTS. Complainant’s LD PRODUCTS mark is also incontestable pursuant to the Lanham Act, 15 U.S.C. § 1065. Complainant’s website, <ldproducts.com>, was registered by Complainant on January 17, 2000.
(ii) Complainant has Common Law rights in the Mark based on secondary meaning.
In addition to the incontestable rights acquired by registration with the US Patent & Trademark Office, Complainant also has common law service mark rights to the Mark which are also protected under the UDRP Rules.
Under common law principles, a protectable trademark right is established upon the mark acquiring secondary meaning in use with commerce. "Secondary meaning is demonstrated where in the minds of the public, the primary significance of a product feature or term is to identify the source of the product itself." Citigroup, Inc. v. Joseph Parvin, D2002-0969 (WIPO May 12, 2003), citing Sari Rattner Dahl Primo Incense v. Spring.net, NAF Case No. FA0096565 (April 12, 2001). Determining factors as to whether a mark has attained secondary meaning have been held to include the length of use, exclusivity of use, any copying, and actual confusion. Id.
Additionally, the issue of secondary meaning has been extensively addressed by the U.S. Federal Courts. Federal case law explains that the test for secondary meaning requires a demonstration that the mark, by means of sufficient marketing, sales, usage, and passage of time, has become identified in the public mind with a particular source of the goods or services. See Big Star Entertainment, Inc. v. Next Big Star, Inc., 2000 WL 420549*9 (S.D.N.Y); see also, Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 851, n. 11, 102 S. Ct. 2182, n. 11 (1982); Bristol-Meyers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1040 (2d Cir. 1992). For support of this standard, the Courts look to the following factors: (1) advertising expenditures; (2) consumer surveys linking the mark to a source; (3) unsolicited media coverage of the service; (4) sales success; (5) attempts to plagiarize the mark; and (6) length and exclusivity of the mark’s use. See Centaur Communications Ltd. v. A\S\M\ Communications, Inc., 830 F.2d 1217, 1221 (2d Cir. 1987); Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).
These factors expressed by both prior arbitration panels and U.S. courts will be addressed in turn as they relate to this case:
a) Length of Use. The Complainant has used the Mark since October 2007, and the use has been continuous since such date. Complainant has used LD PRODUCTS as its marketed identity and brand for over five years, with great success. The Mark is identical to the Complainant’s primary domain name for a bulk of its sales and marketing, and the Mark is used and has been used on signage at Complainant’s headquarters and offices. Leon Decl. ¶2. Complainant’s website, <ldproducts.com>, was registered by Complainant on January 17, 2000.
b) Exclusivity of Use. Complainant’s registration of the Mark has ensured its exclusivity. Additionally, Complainant has vigilantly policed use of the Mark over the years in the form of “cease and desist” letters from Complainant’s counsel and federal litigation, among other enforcement tactics. As a result, the use of the service mark LD PRODUCTS by Complainant is and has been exclusive.
c) Advertising Expenditures. Complainant has spent significant sums on advertising and marketing the LD PRODUCTS mark and brand to consumers and businesses nationwide, in the form of Internet advertising on Google and other major search engines, diversified Internet marketing, partnerships with Internet coupon distributors, and press releases. Complainant’s significant advertising and marketing expenditures per year have directly supported and enhanced the nationwide recognition of the LD PRODUCTS mark and brand in the printer supplies industry.
d) Sales Success. Sales under the LD PRODUCTS mark have grown tremendously every year since its inception, and despite the existence of countless competitors who offer printer supplies and accessories, Complainant has grown, under the Mark, to become one of the largest online retailers of printer supplies in the country. For example, between 2012 and 2013, sales under the Mark amounted to approximately $16.1M, and Complainant expects this number to increase dramatically with further expansion under the Mark in future years.
Based on Complainant’s exclusive use of its mark, extensive expenditures promoting the mark, sales success and market identification, the Mark has clearly achieved secondary meaning. It has therefore met the requirements to be entitled to common law trademark protection. See, i.e. S.N.C. Jesta Fontainebleau v. Po Ser, D2009-1394 (WIPO Nov. 21, 2009); La Mafafak, Inc. dba Cultura Profética v. Domains Real Estate, D2009-0534 (WIPO July 1, 2009); Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, D2007-0123 (WIPO April 16, 2007); Australian Trade Commission v. Matthew Reader, D2002-0786 (WIPO Nov. 12, 2002).
(iii) The Disputed Domain is identical or confusingly similar to Complainant’s Mark –LDPRODUCT.COM v. LD PRODUCTS.
Except for the deletion of “-s” and the gTLD “.com,” the Disputed Domain contains the trademark of the Complainant. Importantly, the deletion of a letter from the LD PRODUCTS mark does not sufficiently distinguish <ldproduct.com> for the purposes of Policy ¶4(a)(i). See Flowers Bakeries Brands, Inc. v. Virtual Sky, D2006-1545 (WIPO Feb. 5, 2007) (finding the domain name <flowerfoods.com> confusingly similar to the complainant’s FLOWERS FOODS mark, noting that “the only difference between the disputed domain name and the Complainant’s trademark is the omission of the letter ‘s.’”); Stokes Seeds Ltd. V. Peter Carrington, D2004-0526 (WIPO Sept. 3, 2004) (finding the domain name <stokeseeds.com> confusingly similar to the complainant’s STOKES SEEDS trademark, noting that “the dropping of the final ‘s’ from STOKES SEEDS is a predictable omission.”). Likewise, the addition of the “.com” gTLD does not reduce the likelihood of confusion between the Disputed Domain and the LD PRODUCTS mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark); Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to the complainant’s HEWLETT-PACKARD mark); 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.”).
Accordingly, the Complainant has submitted sufficient information to satisfy the first prong of the analysis under the Policy regarding the <ldproduct.com> domain.
B. Respondent Has No Rights Or Legitimate Interests In The Disputed Domain. (UDRP § 4(a)(ii))
(i) Respondent has not used the Disputed Domain in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Simply put, Respondent’s website is a scam designed to defraud consumers who think they are purchasing quality ink and toner products from Complainant. Respondent’s <ldproduct.com> resolves to a so-called “parked website,” which displays hyperlinks to direct competitors of Complainant. Through such hyperlinks, Respondent is earning revenue in the form of pay-per-click (PPC) commissions. It is well established that Respondent’s use of the website corresponding to the Disputed Domain as a parked, pay-per-click website does 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a PPC website at a confusingly similar domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a PPC website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees; see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the ICANN Policy.”); see also L.F.P., Inc. v. B and J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (“A Respondent cannot simply do nothing and effectively ‘sit on his rights’ for an extended period of time when that Respondent might be capable of doing otherwise.”).
(ii) Respondent was not commonly known by LD PRODUCTS prior to registration of the Disputed Domain.
Respondent is not, and has never been, known by the <ldproduct.com> domain name, nor is Respondent authorized or licensed to use Complainant’s LD PRODUCTS mark for any purpose. Importantly, mere registration of the Disputed Domain is not sufficient to prove the “commonly known by requirement” of the Policy. See Alain-Martin Pierret d/b/a Bordeau West v. Sierra Technology Group, LLC, FA 472135 (Nat. Arb. Forum July 1, 2005) (“Mere ownership of a domain name is not sufficient to show that a respondent has been “commonly known by the domain name;” if it were, every domain name registrant automatically could claim protection under paragraph 4(c)(ii) of the ICANN Policy.”). Further, the WHOIS domain name registration information lists the registrant of record as “Domains By Proxy, LLC” which bears absolutely no relationship to the Disputed Domain. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the <awvacations.com> domain name.”).
Therefore, Respondent lacks rights and legitimate interests in the Disputed Domain name pursuant to Policy ¶4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
While Complainant does not bear the burden of producing evidence showing that Respondent lacks rights or legitimate interests in the Disputed Domain (see Citigroup, Inc. v. Parvin, D2002-0969 (WIPO May 20, 2003)), Complainant has submitted sufficient information to satisfy the second prong of the analysis under the Policy regarding the <ldproduct.com> domain.
C. The Disputed Domain Was Registered And Is Being Used In Bad Faith. (UDRP § 4(a)(iii))
(i) Respondent’s use of the Disputed Domain name disrupts the business of Complainant and constitutes bad faith registration and use.
The Disputed Domain resolves to a parked website, which displays hyperlinks to direct competitors of Complainant. Respondent’s use of the LD PRODUCTS mark in the confusingly similar <ldproduct.com> domain to host competitive third-party advertisements clearly disrupts Complainant’s business and constitutes bad faith registration and use under Policy ¶4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that respondent’s use of the domain names to operate a commercial search engine with links to the products of complainant’s competitors constitutes bad faith registration and use of the disputed domain names pursuant to Policy ¶4(b)(iii); Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that respondent’s use of a confusingly similar domain to attract Internet users to a directory website containing links to competitor websites represents bad faith registration and use of the domain under Policy ¶4(b)(iii)). Moreover, Respondent is responsible for the content of any website, parked or otherwise, resolving from the Disputed Domain, and Respondent cannot pass such responsibility off to its registrar or domain name service provider. See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007); StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007).
(ii) Respondent’s use of the Disputed Domain to profit from the goodwill associated with Complainant’s LD PRODUCTS mark constitutes bad faith registration and use.
Given the widespread recognition of Complainant’s services offered under the LD PRODUCTS mark, Internet consumers are likely to mistakenly believe that Complainant is affiliated with the Disputed Domain, or has sponsored or endorsed the Disputed Domain. Moreover, Respondent has placed hyperlinks to competitor services at the website resolving from the Disputed Domain, from which Respondent likely generates significant revenue in the form of PPC commissions. Therefore, by using the confusingly similar <ldproduct.com> domain to profit from a likelihood of confusion, Respondent has registered and is using the Disputed Domain for commercial gain in violation of Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); 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).
(iii) Respondent’s use of Disputed Domain to capitalize on Internet users’ typographical errors constitutes typosquatting and bad faith registration and use.
Respondent is using the Disputed Domain to take advantage of a common misspelling of Complainant’s LD PRODUCTS mark, as well as Complainant’s own website, <ldproducts.com>. Previous administrative panels and arbitrators have repeatedly held that this act of typosquatting is conclusive evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
(iv) Respondent was aware or should have been aware of Complainant's prior use of the LD PRODUCTS mark.
Registration and use of a domain name containing a third-party mark constitutes bad faith where the registrant of the domain had knowledge of the mark prior to registration. See Network Solutions, LLC v. Terry Wang, D2004-0675 (WIPO 2004); Christian Dior Couture S.A. v. Liage International Inc., D2000-0098 (WIPO 2000). Complainant’s Mark is widely recognized and maintains a strong presence in popular Internet search engines and shopping sites. Given Complainant’s approximate five year use of the Mark, it is difficult to conceive how Respondent did not have knowledge of the LD PRODUCTS mark prior to the registration of the Disputed Domain.
Furthermore, Respondent was responsible for conducting a thorough search of trademarks and domain names before Respondent selected the Disputed Domain. See Value Marketing, Inc. v. Karlo Volak, FA 0602000649735 (Nat. Arb. Forum April 25, 2005); see also Compact Disc World, Inc. v. Artistic Visions, Inc., FA 0107000097855 (Nat. Arb. Forum Aug. 15, 2001) (finding Respondent cannot acquire rights or legitimate interest in a mark by willful blindness of the existence of the rights of others). Complainant’s registration of the LD PRODUCTS mark “shall be constructive notice of [LD’s] claim of ownership.” See 15 U.S.C. § 1072; see also J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §§ 23:109, 31:40 (2013).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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."
Paragraph 4(a) of the Policy requires Complainant to prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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.”).
Complainant uses the LD PRODUCTS mark in connection with the sale of ink cartridges, toner cartridges, and photo paper for ink and laser jet printers. Complainant owns rights in the LD PRODUCTS mark under Policy ¶4(a)(i) because it registered the mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,492,006 filed January 16, 2008, registered August 26, 2008). A complainant’s registration of a mark with the USPTO normally sufficiently establishes the complainant’s rights in the mark under Policy ¶4(a)(i). See, e.g., Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”). A complainant’s rights in a mark date back at least to the date the trademark application was filed with the USPTO. Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). According to Complainant’s trademark application, the mark was first used in commerce on or before October 2007. Therefore, Complainant has adequately established its rights in the LD PRODUCTS mark pursuant to Policy ¶4(a)(i) dating back at least to the filing date of January 15, 2008.
Although Complainant claims Respondent registered the <ldproduct.com> domain name on April 5, 2013, the WHOIS information suggests the disputed domain name was originally registered on January 24, 2003. Complainant does not explain the discrepancy. The UDRP does not explicitly require Complainant to have rights that pre-date the registration of the disputed domain name (although most complainants do). Here, Complainant incorporated its business in 1999 and registered its <ldproducts.com> domain name in 2000, which suggests Complainant first used the LD PRODUCTS mark prior to 2003 when the disputed domain name was originally registered. The Panel finds Complainant’s common law rights in its mark pre-date Respondent’s registration of the disputed domain name, although the Panel does not believe that is outcome determinative.
Complainant claims the <ldproduct.com> domain name is confusingly similar to Complainant’s LD PRODUCTS mark because the domain name fully appropriates the mark and merely adds the gTLD “.com” and deletes the letter “s.” The disputed domain name also deletes the space found between words in the LD PRODUCTS mark. An eliminated space and adding a gTLD must be disregarded in a Policy ¶4(a)(i) analysis because a space is not a valid character in a domain name and each domain name requires a gTLD or ccTLD. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶4(a)(i).”). A disputed domain is confusingly similar to a complainant’s mark where the domain name incorporates complainant’s mark in its entirety but deletes a single letter. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Therefore, the <ldproduct.com> domain name is found to be confusingly similar to Complainant’s LD PRODUCTS mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to demonstrate it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii), because the WHOIS information identifies the registrant of the <ldproduct.com> domain name as “Whois Agent / Whois Privacy Protection Service, Inc.” A respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest otherwise. See, e.g., 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). Since there is nothing else in the record suggesting Respondent is commonly known as <ldproduct.com>, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Respondent’s use of the disputed domain name is not protected as 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) because the domain name resolves to a “pay-per-click” website featuring links to third-party providers of ink and toner products. The disputed domain name is being used to promote links entitled “HP Inkjet Printer Ink,” “Canon Printer Ink Supplies,” “Printer Ink Cartridges,” and “Printer Ink Jet Cartridges,” among other generic links. A respondent’s use of a disputed domain name to promote links to the complainant’s competitors is not a use protected under ¶¶4(c)(i) or 4(c)(iii). See, e.g., H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, Respondent’s use of the <ldproduct.com> domain name to promote links to third-party providers of toner and ink products is not protected as 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).
Finally, Respondent registered the disputed domain name by using a privacy service. This means the real respondent’s name is not associated with the disputed domain name, which is essentially owned by a naked trustee. This means the real respondent cannot acquire rights to the disputed domain name because the real respondent does not own it of record. This Respondent does not control the contents or use of the disputed domain, so it cannot acquire any rights because it doesn’t use the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent’s use of the disputed domain name disrupts Complainant’s business, and Respondent demonstrates bad faith registration and use of the disputed domain name pursuant to Policy ¶4(b)(iii). The disputed domain name is being used to promote links entitled “HP Inkjet Printer Ink,” “Canon Printer Ink Supplies,” “Printer Ink Cartridges,” and “Printer Ink Jet Cartridges,” among other generic links. The <ldproduct.com> domain name is being used to promote links to third-party competitors of Complainant in the printer ink and toner industry. A respondent demonstrates bad faith disruption of the complainant’s business under Policy ¶4(b)(iii) where the disputed domain name resolves to a parked website that displays links to the complainant’s competitors. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”). Respondent has disrupted Complainant’s business by displaying links to Complainant’s competitors, and Respondent has thereby demonstrated bad faith registration and use of the disputed domain name under Policy ¶4(b)(iii).
Complainant claims the disputed domain name confuses Internet users as to Complainant’s sponsorship of the domain name, and Respondent is profiting from this confusion in the form of pay-per-click fees. Respondent has thus demonstrated bad faith registration and use of the <ldproduct.com> domain name pursuant to Policy ¶4(b)(iv). A respondent demonstrates bad faith attraction for commercial gain under Policy ¶4(b)(iv) where the domain name capitalizes off of the well-known mark of a complainant and is used to commercially benefit the respondent. Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). A respondent commercially profits from its use of a disputed domain name where the resolving website promotes links to the complainant’s competitors and the respondent is likely receiving referral fees (or at least free services, such as parking) in exchange for its promotion of such links. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The <ldproduct.com> domain name capitalizes off Complainant’s LD PRODUCTS mark because the domain name differs from the mark by a single character: the elimination of the letter “s.” The <ldproduct.com> domain name is being used to promote links to third-party competitors of Complainant in the printer ink and toner industry. For the foregoing reasons, Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶4(b)(iv).
Complainant argues Respondent has engaged in typosquatting because the disputed domain name differs from Complainant’s mark by a single character, which is adequate evidence of Respondent’s bad faith under Policy ¶4(a)(iii). That isn’t the standard under the UDRP and this Panel is loathe to read such a ground into the UDRP, even though other panelists might do so.
Finally, Respondent registered the disputed domain name using a privacy service. As this Panel has previously ruled, such a registration gives rise to a rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <ldproduct.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, December 11, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page