LTD Commodities, LLC v. Domain Drop S.A.
Claim Number: FA0609000809759
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 Domain Drop S.A. (“Respondent”), P.O. Box 556, Main Street, Charlestown, West Indies KN.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <lakesidecollectons.com> and <ltdcommedites.com>, registered with Domaindoorman, Llc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2006.
On September 29, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <lakesidecollectons.com> and <ltdcommedites.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 October 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 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@lakesidecollectons.com and postmaster@ltdcommedites.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceding.
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:
Complainant has been in business since 1963 in the field of
catalog mail order distributorships for general merchandise.
Complainant has used its LTD COMMODITIES mark since that
time, and in 1995 began distributing and marketing its catalog under its
LAKESIDE COLLECTIONS, INC. mark.
Complainant holds service mark registrations with the United
States Patent and Trademark Office (“USPTO”) for its LTD COMMODITIES mark (Reg.
No. 2,409,188, issued November 28, 2000) and its LAKESIDE COLLECTIONS, INC.
mark (Reg. No. 2,432,488, issued March 6, 2001).
Complainant operates websites at the
<ltdcommodities.com>, <lakeside.com> and <lakesidecollection.com>
domain names.
Respondent registered the <lakesidecollectons.com> domain name on July 17, 2006 and the <ltdcommedites.com> domain name on June 21, 2006.
Respondent’s domain names resolve to websites displaying links to third-party websites, some of which are in direct competition with the business of Complainant.
Respondent’s <lakesidecollectons.com> domain name is confusingly similar to Complainant’s LAKESIDE COLLECTIONS, INC. mark and <ltdcommedites.com> domain name is confusingly similar to Complainant’s LTD COMMODITIES mark.
Respondent does not have any rights or legitimate interests in the domain names <lakesidecollectons.com> and <ltdcommedites.com>.
Respondent registered and uses the domain names <lakesidecollectons.com> and <ltdcommedites.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to service marks in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant’s service mark registrations with the USPTO sufficiently establish its rights in the LTD COMMODITIES and LAKESIDE COLLECTIONS INC. marks. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates; rather, it is sufficient that a complainant can demonstrate a mark in some jurisdiction).
Respondent’s <lakesidecollectons.com> domain
name is confusingly similar to Complainant’s LAKESIDE COLLECTIONS INC. mark as
it is a common misspelling of the dominant portion of the mark, formed by
removing an “i” and deleting the “INC.” from the end of the mark. Such alterations do not negate the confusing
similarity between Complainant’s mark and Respondent’s domain name. See,
for example, Belkin Components v. Gallant, FA 97075 (Nat. Arb.
Forum May 29, 2001) (finding the <belken.com> domain name confusingly
similar to a complainant's BELKIN mark because the name merely replaced the
letter “i” in that mark with the letter “e.
Respondent’s <ltdcommedites.com> domain name is
likewise confusingly similar to Complainant’s LTD COMMODITIES mark as the
disputed domain name is a slightly misspelled version of Complainant’s mark
created by replacing the first “i” with an “e”. This change does not negate the confusing similarity between
Complainant’s mark and Respondent’s disputed domain name. 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 a complainant’s HEWLETT-PACKARD mark); see also Toronto-Dominion Bank v.
Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain
names <tdwatergouse.com> and <dwaterhouse.com> are virtually
identical to a complainant’s TD WATERHOUSE name and mark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <lakesidecollectons.com> and <ltdcommedites.com> domain names. Complainant must first make a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the mere assertion by a complainant that a respondent has no right or legitimate interests in a disputed domain is sufficient to shift the burden of proof to that respondent to demonstrate that such rights or legitimate interests exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Am. Express
Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.
See also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint). However, the Panel will nonetheless examine the record to determine if there is any basis for concluding that Respondent has rights or legitimate interests in the contested domains under Policy ¶ 4(c).
We begin by observing that Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain names, and there is no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. In Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000), a panel found no rights or legitimate interests where, among other things, a respondent was not commonly known by the mark. 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").
We next note that it is undisputed on this record that Respondent is using the contested domain names to operate websites displaying links to third-party websites, some of which are in direct competition with the business of Complainant, presumably for the commercial benefit of receiving click-through fees. Such diversion 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). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that a respondent’s use of a disputed domain name to redirect Internet users to websites unrelated to a complainant’s mark, websites where that respondent presumably receives a referral fee for each misdirected Internet user, is not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites, unrelated to a complainant and presumably with the purpose of earning a commission or pay-per-click referral fee does not evidence rights or legitimate interests in a domain name).
The Panel thus finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant alleges that Respondent acted in bad faith by
registering and using the <lakesidecollectons.com> and <ltdcommedites.com>
domain names. There is no dispute that
Respondent uses the contested domains, which are confusingly similar to
Complainant’s marks, to redirect Internet users to websites containing links to
third-party websites, some of which are in direct competition with the business
of Complainant. This 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 a respondent
registered and used the domain name <eebay.com> in bad faith where it has
used a contested domain name to promote competing auction sites); to the same effect, see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000).
Moreover, based on the
uncontested evidence presented by Complainant, we may infer that Respondent
receives click-through fees for the links displayed on the websites that
resolve from the disputed domain names.
Such commercial benefit constitutes bad faith registration and use under
Policy ¶ 4(b)(iv).
In addition,
Respondent’s disputed domain names are capable of creating confusion as to
Complainant’s possible sponsorship of or affiliation with the <lakesidecollectons.com>
and <ltdcommedites.com> domain names, which is further evidence of
bad faith registration and use. See Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
a respondent profits from its diversionary use of a complainant's mark when a
domain name resolves to commercial websites and that respondent fails to
contest the complaint, it may be concluded that that respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent
directed Internet users seeking a complainant’s site to its own website for
commercial gain).
Finally, Respondent evidently registered the contested domain
name with either actual or constructive knowledge of Complainant’s rights in
the mark here in issue by virtue of Complainant’s prior registrations of its
mark with the USPTO. Registration of a
confusingly similar domain name despite such actual or constructive knowledge
evidences bad faith registration and use of the domain name pursuant to Policy
¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the domain names <lakesidecollectons.com> and <ltdcommedites.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 13, 2006
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