LTD Commodities, LLC v. Dotsan c/o R.S. Potdar
Claim Number: FA0511000590770
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 Dotsan c/o R.S. Potdar (“Respondent”), 35-37 Sunder Mahal, Mumbai, India 400021, IN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lakesidecollections.com>, registered with Bulkregister, Llc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 1, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2005.
On November 2, 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 November 3, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 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@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 December 1, 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.
This is the second
complaint brought by Complainant regarding the <lakesidecollections.com>
domain name. Complainant’s original claim concerning the <lakesidecollections.com>
domain name (FA 563745) was denied because the Panel found that
Respondent’s domain name was not confusingly similar to Complainant’s LTD
COMMODITIES mark pursuant to Policy ¶ 4(a)(i).
The Panel did not specify whether the claim was denied with or without
prejudice. Generally, an adverse
decision such as the one reached in Complainant’s previously-filed claim, is
precluded from further arbitration by the principle of res judicata. Complainant, in its original claim, made an
inadvertent, but fatal mistake, by comparing its LTD COMMODITIES mark to the <lakesidecollections.com>
domain name, rather than its THE LAKESIDE COLLECTION, INC. mark. It is within the Panel’s discretion to
determine whether or not Complainant’s inadvertent mistake should bar
Complainant from refiling, or whether Complainant’s claim is precluded from
further arbitration pursuant to the Policy. See Creo Prods. Inc. v. Website in Dev., D2000-1490 (WIPO Jan.
19, 2001) (“In relation to a re-filed Complaint that is truly a new action
under the Uniform Policy, the administrative panel is undertaking a
consideration of the merits of the case de novo. It follows that, unless
agreed otherwise by the parties, the administrative panel considering the
re-filed Complaint cannot rely on the findings of fact, or on the conclusions
on the application of the Uniform Policy to the found facts, reached by the
administrative panel on the previous complaint.”). It is clear to the Panel that this is a new action filed to
correct Complainant’s mistake in the earlier action.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lakesidecollections.com> domain name is confusingly similar to Complainant’s THE LAKESIDE COLLECTION, INC. 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.
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 holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the THE LAKESIDE COLLECTION, INC. mark (Reg. No. 2,432,488 issued March 6, 2001).
Respondent registered the <lakesidecollections.com> domain name on October 24, 2001. Respondent is using the disputed domain name to redirect Internet users to a website that displays links to various third-party commercial websites.
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.
Complainant has established rights in the THE LAKESIDE
COLLECTION, INC. mark through registration of the mark with the USPTO. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a mark);
see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s
<lakesidecollections.com> domain name is confusingly similar to
Complainant’s THE LAKESIDE COLLECTION, INC. mark because Respondent’s domain
name incorporates the dominant features of Complainant’s mark, omits the terms
“The” and “Inc.,” and adds the letter “s” and the generic top-level domain
“.com.” The Panel finds that such minor
alterations to Complainant’s registered mark do not negate the confusingly
similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Asprey &
Garrard Ltd v. Canlan Computing, D2000-1262
(WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is
confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY
marks); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat.
Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to the complainant’s mark, where the complainant holds the
WEST JET AIR CENTER mark); see also Victoria’s Secret v. Zuccarini, FA
95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and
adding letters to words, a respondent does not create a distinct mark but
nevertheless renders the domain name confusingly similar to the complainant’s
marks); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263
(Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to the complainant’s
NATIONAL GEOGRAPHIC mark); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <lakesidecollections.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has offered no evidence and there is no evidence
in the record suggesting that Respondent is commonly known by the <lakesidecollections.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <lakesidecollections.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
Moreover, Respondent is using the <lakesidecollections.com> domain name to redirect Internet users to various third-party commercial websites. Respondent’s use of a domain name that is confusingly similar to Complainant’s THE LAKESIDE COLLECTION, INC. mark to redirect Internet users interested in Complainant’s products and services to a website featuring links to various third-party commercial websites is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers that Respondent is using the disputed domain name to generate click-through fees. Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv), as Respondent is using the <lakesidecollections.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant's mark to sell the complainant's products); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <lakesidecollections.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: December 12, 2005
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