national arbitration forum

 

DECISION

 

LTD Commodities, LLC v. Dotson c/o R.S. Potdar

Claim Number:  FA0509000563745

 

PARTIES

 

Complainant is LTD Commodities, LLC (“Complainant”), represented by Irwin C. Alter, of Law Offices of Alter and Weiss, 19 S. LaSalle, Suite 1650, Chicago, IL 60603.  Respondent is Dotson c/o R.S. Potdar (“Respondent”), 35-37 Sunder Mahal, Mumbai, India 400021.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <lakesidecollections.com>, registered with Bulkregister, Llc.

 

PANEL

 

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.

 

Louis E. Condon as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2005; the National Arbitration Forum received a hard copy of the Complaint on September 19, 2005.

 

On September 21, 2005, Bulkregister, Llc. confirmed by e-mail to the National Arbitration Forum that the <lakesidecollections.com> domain name is registered with Bulkregister, Llc. and that Respondent is the current registrant of the name.  Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, 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 September 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 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@lakesidecollections.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 18, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A.  Complainant makes the following assertions:

 

1.      Respondent’s <lakesidecollections.com> domain name is confusingly similar to Complainant’s LTD COMMODITIES mark.

 

2.      Respondent does not have any rights or legitimate interests in the <lakesidecollections.com> domain name.

 

3.      Respondent registered and used the <lakesidecollections.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, LTD Commodities, LLC has been in business since 1963 in the field of catalog mail order distributorships for general merchandise including toys, jewelry, watches, luggage and various other products.  Complainant’s catalog has become very well-known among consumers and costs millions of dollars each year to print.

 

Complainant has registered its LTD COMMODITIES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,409,188 issued November 28, 2000).

 

Respondent registered the <lakesidecollections.com> domain name on October 24, 2001.  Respondent’s domain name resolves to a website that displays links to various third-party commercial websites. 

 

DISCUSSION

 

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)    the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)    Respondent has no rights or legitimate interests in respect of the domain name; and

(3)    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

In its Complaint, Complainant states:

                                                           

            Under the UDRP Rules, para. 3(b)(ix), the additional factual and legal grounds on which the Complaint is made are as follows:  The Respondent's domain name lakesidecollections.com is confusingly similar to the Complainant’s marks LTD COMMODITIES, INC. and LTD COMMODITIES, and to the Complainant’s domain name ltdcommodities.com, because the Respondent’s domain name is simply a common misspelling of the Complainant’s marks or a simple typographical error of Complainant’s marks and/or domain name.

 

Compl. at p. 5.

 

The Panel disagrees. Even with the Respondent defaulting, in order to obtain the relief requested the Complainant must first make out a prima facia case. The <lakesidecollections.com> domain name is not confusingly similar to Complainant’s LTD COMMODITIES mark because, despite sharing some common letters, there is no similarity between Respondent’s domain name and Complainant’s mark.  Thus, the Panel finds that Complainant is unable to satisfy Policy ¶ 4(a)(i).  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different websites are quite often similar, because of the need for language economy, and that very small differences matter."); see also Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum July 18, 2004) (“The <froogles.com> domain name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant's mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark.”).

 

Since Complainant has failed to establish the first element of the Policy, it is unnecessary to address the remaining two elements.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).

 

The Panel finds that Complainant has failed to satisfy Policy ¶ 4(a)(i).

 

DECISION

 

Complainant having failed to establish the first element required under the ICANN Policy, the Panel concludes that relief should be DENIED and Respondent allowed to retain the domain name.

 

 

 

 

Louis E. Condon, Panelist

Dated:  October 28, 2005