Liberty
Enterprises, Inc. v. LaPorte Holdings, Inc.
Claim Number:
FA0501000411753
Complainant is Liberty Enterprises, Inc. (“Complainant”), represented by Richard A. Kempf, of Maslon, Edelman, Borman and Brand, LLP, 3300 Wells Fargo Center, 90 South Seventh Street, Minneapolis, MN 55401. Respondent is LaPorte Holdings, Inc. (“Respondent”), ATTN: culibertysite.com, b2blibertysite.com, reorderlibertysite.com, c/o Nameking, Inc., 2202 S. Figueroa Street, Suite 721, Los Angeles, CA 90023.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <reorderlibertysite.com>, <b2blibertysite.com> and <culibertysite.com>, registered with Nameking.com, Inc.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 31, 2005.
On January 31, 2005, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <reorderlibertysite.com>, <b2blibertysite.com> and <culibertysite.com> are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. 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 3, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 23, 2005 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@reorderlibertysite.com, postmaster@b2blibertysite.com and postmaster@culibertysite.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <reorderlibertysite.com>, <b2blibertysite.com> and <culibertysite.com> domain names are confusingly similar to Complainant’s LIBERTY mark.
2. Respondent does not have any rights or legitimate interests in the <reorderlibertysite.com>, <b2blibertysite.com> and <culibertysite.com> domain names.
3. Respondent registered and used the <reorderlibertysite.com>, <b2blibertysite.com> and <culibertysite.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
In 1988, Complainant, Liberty Enterprises, Inc., began as a check printing company, providing check-printing services to credit unions, banks and their respective customers. Since then, Complainant has greatly expanded and now provides a wide variety of products and services, including management and marketing consulting services, in the credit union industry. Approximately 70% of all credit unions in the United States are customers of Complainant.
Complainant has registered the LIBERTY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,880,582 filed June 4, 1999 and issued September 7, 2004). In addition, Complainant has registered numerous marks featuring the term “liberty,” including LIBERTY CHECK PRINTERS (Reg. No. 1,838,911 issued June 7, 1994), LIBERTYDIRECT (Reg. No. 1,825,457 issued March 8, 1994) and LIBERTYSOLUTIONS (Reg. No. 1,839,579 issued June 14, 1994).
Respondent registered the <reorderlibertysite.com> domain name on November 11, 2002, the <culibertysite.com> domain name on December 25, 2003 and the <b2blibertysite.com> domain name on October 8, 2004. Respondent’s domain names resolve to a website featuring links to competing financial service providers.
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.
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.
Although Respondent registered the disputed domain names
before Complainant’s registration for the LIBERTY mark was issued, Complainant
established rights in the mark prior to the domain name registrations because
the filing date of the successful application predates Respondent’s
registrations of all of the disputed domain names. The effective date of rights in a mark reverts back to the filing
date if the application results in a successful registration. See Planetary Soc’y v. Salvador Rosillo
domainsforlife.com, D2001-1228 (WIPO Feb. 12, 2002)
(holding that the effective date of Complainant’s trademark rights date back to
the application’s filing date); see also Phoenix Mortgage
Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“The effective date of
Complainant's federal rights is . . . the filing date of its issued
registration.”).
Respondent’s
<reorderlibertysite.com>, <b2blibertysite.com>
and <culibertysite.com> domain names are confusingly similar
to Complainant’s LIBERTY mark.
Respondent’s domain names incorporate Complainant’s mark in its entirety
and add the generic terms “site,” “reorder,” “b2b” and “cu” (which is an
abbreviation of credit union).
Additionally, Respondent’s domain names add the generic top-level domain
“.com.” Such additions are not enough
to overcome a finding of confusing similarity between Respondent’s domain names
and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of Complainant combined with a generic word or
term); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable assertions and allegations set forth by Complainant as true and accurate. See 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.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant has asserted that Respondent has no rights or legitimate interests in the disputed domain names, and Respondent, in not submitting a response, has failed to rebut this assertion. Thus, the Panel may interpret Respondent’s failure to respond as evidence that Respondent lacks rights and legitimate interests in the <reorderlibertysite.com>, <b2blibertysite.com> and <culibertysite.com> domain names pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); 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.”).
Furthermore, Respondent is using the disputed domain names, which are confusingly similar to Complainant’s LIBERTY mark, to operate a website featuring links to competing financial services providers. Such use is not a use in connection with 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).
Moreover, nothing in the record shows that Respondent is either commonly known by the disputed domain names or is authorized to register domain names featuring Complainant’s LIBERTY mark. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <reorderlibertysite.com>,
<b2blibertysite.com> and <culibertysite.com> domain names,
which contain confusingly similar variations of Complainant’s LIBERTY mark, to
operate a website featuring links to competing financial services
providers. Such use constitutes
disruption and is evidence that Respondent registered and used the domain names
in bad faith pursuant to Policy ¶ 4(b)(iii).
See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also Disney Enters., Inc. v.
Noel, FA 198805 (Nat. Arb.
Forum Nov. 11, 2003) (“Respondent registered a
domain name confusingly similar to Complainant's mark to divert Internet users
to a competitor's website. It is a reasonable inference that Respondent's
purpose of registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) &
(iv).”).
The Panel infers that Respondent receives click-through fees for
diverting Internet users to the competing websites. Since Respondent is using domain names that are confusingly
similar to Complainant’s mark, consumers accessing Respondent’s domain names
may become confused as to Complainant’s affiliation with the resulting
website. Thus, the Panel finds that
Respondent’s commercial use of the disputed domain names constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat.
Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary
use of Complainant's mark when the domain name resolves to commercial websites
and Respondent fails to contest the Complaint, it may be concluded that
Respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Assoc. 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.’”).
Furthermore, Respondent registered the disputed domain names with actual or constructive knowledge of Complainant’s rights in the LIBERTY mark due to Complainant’s registration of the mark with the USPTO. Moreover, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark due to the obvious connection between Complainant’s business and the content featured on Respondent’s website. Thus, the Panel finds that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
The Panel finds that 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 <reorderlibertysite.com>, <b2blibertysite.com> and <culibertysite.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 21, 2005
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