LTD Commodities, LLC v. Wang Lee Domains, Ltd.
Claim Number: FA0608000766659
Complainant is LTD Commodities, LLC (“Complainant”), represented by Nora Preece, of Law Offices of Alter and Weiss, 19 S. LaSalle, Suite 1650, Chicago, IL 60603. Respondent is Wang Lee Domains Ltd. (“Respondent”), Suite 410, 4th Floor, Barkly Wharf, Le Caudan Waterfront, Port Louis MU.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ltdcommotodies.com>, <ltdcommidoties.com>, and <ltdcommodidties.com> registered with Domaindoorman, Llc, and <ltdcommodotities.com> registered with Belgiumdomains, 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 August 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2006.
On August 2, 2006, Domaindoorman, Llc, confirmed by e-mail to the National Arbitration Forum that the <ltdcommotodies.com>, <ltdcommidoties.com> and <ltdcommodidties.com> domain names are registered with Domaindoorman, Llc, and that Respondent is the current registrant of the names. Domaindoorman, Llc, has verified that Respondent is bound by the Domaindoorman, 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 August 2, 2006, Belgiumdomains, Llc confirmed by e-mail to the National Arbitration Forum that the <ltdcommodotities.com> domain name is registered with Belgiumdomains, Llc and that Respondent is the current registrant of the name. Belgiumdomains, Llc has verified that Respondent is bound by the Belgiumdomains, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On August 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 2006 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@ltdcommotodies.com, postmaster@ltdcommidoties.com, postmaster@ltdcommodidties.com and postmaster@ltdcommodotities.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2006, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ltdcommotodies.com>, <ltdcommidoties.com>, <ltdcommodidties.com> and <ltdcommodotities.com> domain names are confusingly similar to Complainant’s LTD COMMODITIES mark.
2. Respondent does not have any rights or legitimate interests in the <ltdcommotodies.com>, <ltdcommidoties.com>, <ltdcommodidties.com> and <ltdcommodotities.com> domain names.
3. Respondent registered and used the <ltdcommotodies.com>, <ltdcommidoties.com>, <ltdcommodidties.com> and <ltdcommodotities.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LTD Commodities, LLC, is a company that has
been in the business field of catalog mail order distributorships for
merchandise including toys, housewares, and gifts since 1963. Since that time Complainant has spent
millions of dollars designing, printing and advertising their catalog. Additionally, they have operated a
corresponding website at <ltdcommodities.com> since 1996. Complainant holds a registration with the
United States Patent and Trademark Office (“USPTO”) for the LTD COMMODITIES
mark (Reg. No. 2,409,188 issued November 28, 2000).
Respondent registered the <ltdcommotodies.com> domain name on June 12, 2006, the <ltdcommidoties.com> domain name on June 27, 2006, the <ltdcommodidties.com> domain name on June 16, 2006 and the <ltdcommodotities.com> domain name on July 29, 2006. Respondent’s disputed domain names resolve to websites that display links to third-party websites, some of which are in direct competition with Complainant.
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.
The Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the LTD COMMODITIES mark. See Innomed Techs., 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.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The Panel finds that Respondent’s <ltdcommotodies.com>, <ltdcommidoties.com>, <ltdcommodidties.com> and <ltdcommodotities.com> domain names are confusingly similar to Complainant’s LTD COMMODITIES mark as the disputed domain names are misspellings of Complainant’s mark. In Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000), the panel found that the <beanybaby.com>, <beaniesbabies.com> and <beanybabies.com> domain names were confusingly similar to the complainant’s BEANIE BABIES mark. See 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). The Panel thus finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests in the <ltdcommotodies.com>, <ltdcommidoties.com>, <ltdcommodidties.com> and <ltdcommodotities.com> domain names. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use
Complainant’s LTD COMMODITIES mark and that Respondent is not associated with
Complainant in any way. Furthermore,
Respondent’s WHOIS information does not suggest that Respondent is commonly
known by the disputed domain names. The
Panel therefore finds that Complainant known by the disputed domain names under
Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding
that the respondent was not commonly known by the
<mobilitytrans.com> domain name because
it was doing business as “Mobility
Connections”).
The evidence on record indicates that Respondent is using the disputed domain names to display links to third-party websites, some of which are in direct competition with Complainant, for which Respondent presumably earns click-through fees. In WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), the panel found 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 received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names). Accordingly, the Panel finds that Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent is using the <ltdcommotodies.com>, <ltdcommidoties.com>,
<ltdcommodidties.com> and <ltdcommodotities.com>
domain names to divert Internet users to websites that display links to
third-party websites, some of which are in direct competition with
Complainant. The Panel finds that such
use constitutes disruption and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(Dec. 15, 2000) (finding that the respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Furthermore, the Panel
finds, based on the uncontested evidence presented by Complainant, that
Respondent receives click-through fees for diverting Internet users to the
third-party websites advertised on the websites that result from the disputed
domain names. Moreover, the use of Complainant’s
mark in the disputed domain names creates a likelihood of confusion as to the
source and affiliation of Complainant with the disputed domain names and
corresponding websites. Such use of the
disputed domain names constitutes bad faith registration and use under Policy ¶
4(b)(iv). 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.’”); see also Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use
of the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the site).
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 <ltdcommotodies.com>, <ltdcommidoties.com>, <ltdcommodidties.com> and <ltdcommodotities.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 22, 2006
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