Iowa Sports Foundation v. LaPorte Holdings c/o Admin
Claim Number: FA0511000600958
Complainant is Iowa Sports Foundation (“Complainant”), represented by Neal K. Westin, of Nyemaster Law Firm, 700 Walnut, Suite 1600, Des Moines, IA 50309. Respondent is LaPorte Holdings c/o Admin (“Respondent”), 5842 Wilshire Blvd., #1928, Los Angeles, CA 90036.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lightenupiowa.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 November 21, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 22, 2005.
On November 22, 2005, Nameking.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <lightenupiowa.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. 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 November 29, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 19, 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@lightenupiowa.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 22, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lightenupiowa.com> domain name is identical to Complainant’s LIGHTEN UP IOWA mark.
2. Respondent does not have any rights or legitimate interests in the <lightenupiowa.com> domain name.
3. Respondent registered and used the <lightenupiowa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Iowa Sports Foundation, operates a program under the LIGHTEN UP IOWA mark as a team-based approach that encourages residents of Iowa to improve their nutritional intake and to increase their participation in physical fitness activities. Complainant first used the LIGHTEN UP IOWA mark on November 28, 2001 and has registered the mark as a service mark with the Iowa Secretary of State (Reg. No. W00339241, issued January 16, 2003). Complainant has used the mark in connection with various forms of advertising for its program, including brochures, television and radio advertising, clothing signs and all other promotional items. Complainant also uses the LIGHTEN UP IOWA mark in connection with its website at <lightenupiowa.org>.
Respondent registered the <lightenupiowa.com> domain name on February 28, 2003. Respondent is using the domain name to operate a website featuring tabs with headings related to Complainant’s program, such as “team names,” “registration,” “reporting,” “walking,” “pedometer” and “final results of lighten up.” These tabs redirect Internet users to advertisements and various commercial websites featuring weight loss solutions through the use of drugs and quick weight loss programs.
Complainant has provided evidence that Respondent has been involved in several UDRP proceedings where Respondent, LaPorte Holdings, Inc. was found to be “an alter ego for Henry Chan, a notorious cybersquatter” who has registered numerous domain names featuring the marks of others. See PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/ka Henry Chan, D2005-0087 (WIPO Mar. 31, 2005); see also Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., D2004-0707 (WIPO Dec. 12, 2004); see also Societe des Hotels Meridien v. LaPorte Holdings, Inc., D2004-0849 (WIPO Dec. 16, 2004).
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 that it has rights in the LIGHTEN UP IOWA mark through registration with the Iowa Secretary of State in addition to its continuous use and promotion of the mark in commerce. See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum Jan. 22, 2003) (finding evidence that the complainant had established rights in the BILLINGS GAZETTE mark through registration with the Montana and Wyoming state trademark officials); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant’s trademark registrations in Pennsylvania and New Jersey operated as evidence that the complainant had sufficient standing to bring a claim under the UDRP).
The <lightenupiowa.com> domain name registered by Respondent is identical to Complainant’s LIGHTEN UP IOWA mark because the domain name incorporates Complainant’s entire mark and adds the addition of the generic top-level domain “.com.” The Panel finds that the addition of the generic top-level domain “.com” does not negate the identical nature of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See 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.”); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <lightenupiowa.com> domain name. When a complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by
not submitting a response, the 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.”).
Additionally, Respondent has not
offered any evidence and there is no proof in the record suggesting that
Respondent is commonly known by the <lightenupiowa.com>
domain name. Thus, the Panel concludes
that Respondent has not established rights or legitimate interests in the
disputed domain name 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
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Moreover, Respondent is using the <lightenupiowa.com> domain name to host a website featuring advertisements and various commercial websites offering weight loss solutions through the use of drugs and quick weight loss programs. The Panel presumes that Respondent receives click through fees by the nature of Respondent’s website, and finds that Respondent’s use of a domain name that is identical to Complainant’s mark to divert Internet users for Respondent’s own commercial gain does not constitute 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 MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent intentionally registered a disputed domain name that contains Complainant’s entire mark and did so for Respondent’s commercial gain. Respondent’s domain name diverts Internet users who seek Complainant’s LIGHTEN UP IOWA mark to Respondent’s commercial website through the use of an identical domain name. Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s LIGHTEN UP IOWA mark. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv), See 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); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent’s record of chronic cybersquatting,
as evidenced by the prior UDRP decisions cited by Complainant, demonstrates
that Respondent registered and used the disputed domain name in bad faith
pursuant to Poilcy ¶ 4(b)(ii). See Am. Online, Inc. v. iDomainNames.com, FA
93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct
where the respondent registered many domain names unrelated to its business
which infringe on famous marks and websites); see also Armstrong Holdings, Inc. v. JAZ Assocs.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon
others’ famous and registered trademarks).
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 <lightenupiowa.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr., Panelist
Dated: January 5, 2006
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