Mercer Management Consulting, Inc. v. k,j
Claim Number: FA0703000944805
Complainant is Mercer Management Consulting, Inc. (“Complainant”), represented by Doreen
L. Costa, of Baker Botts L.L.P., 30 Rockefeller
Plaza, New York, NY 10112.
Respondent is k,j (“Respondent”), P.O. Box 7-5324,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lippincott.com>, registered with Enom, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2007.
On March 23, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <lippincott.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 March 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 2007, 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@lippincott.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2007, 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 proceeding.
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:
Complainant has used the LIPPINCOTT mark in connection with the provision of identity and brand strategy consulting services, including business marketing consultant services, business consultation, business management consultation, and business management consulting in connection with corporate identity and brand management strategies since 1943.
Complainant has offices worldwide, and currently has over 3,000 clients internationally, and its LIPPINCOTT mark has become world famous.
Complainant now holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the LIPPINCOTT & MARGULIES and LIPPINCOTT MERCER marks (i.e. Reg. No. 2,962,884, issued June 21, 2005 and Reg. No. 2,939,300, issued April 12, 2005, respectively).
Respondent registered the <lippincott.com> domain name on November 30, 1994.
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website displaying a search engine and links to unrelated third-party websites.
Respondent’s <lippincott.com> domain name is confusingly similar to Complainant’s LIPPINCOTT MERCER mark.
Respondent does not have any rights or legitimate interests in the <lippincott.com> domain name.
Respondent registered and uses the <lippincott.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is 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 a 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 is not required to hold a registered trademark in order to establish rights in the LIPPINCOTT mark. Common law rights are sufficient to satisfy Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
It is undisputed that Complainant has established common law rights in its LIPPINCOTT mark through extensive and continuous use since at least 1943. Complainant has thus established substantial consumer recognition and secondary meaning in the mark sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <lippincott.com>
domain name is substantively identical to Complainant’s LIPPINCOTT mark because
Respondent incorporates the mark in its entirety and merely adds the generic
top-level domain “.com”. The addition of a top-level domain is not a relevant
factor for purposes of determining whether a disputed domain name is identical
to a complainant’s mark because all domain names require the addition of a
top-level domain. See
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <lippincott.com> domain name. Complainant’s submission establishes a prima facie case, which shifts to Respondent the burden to prove that it has rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002): “[b]ecause 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).” See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding, inter alia, that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The Panel is entitled to assume that Respondent has no rights or legitimate interests here because Respondent has failed to respond to the Complaint. See 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.” See also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond can be construed as an admission that it has no legitimate interest in a domain name). However, the Panel will nonetheless evaluate all available evidence to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c).
In this regard, we note that Complainant alleges, and
Respondent does not deny, that Respondent uses the disputed domain name to redirect Internet
users to Respondent’s website displaying a search engine with links to
unrelated third-party websites. Such a
use is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb.
Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a
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); see also Trans
Global Tours, LLC v. Yong Li, FA 196166
(Nat. Arb. Forum Nov. 1, 2003) (finding that a respondent was not using a
domain name for a bona fide offering of goods or services or a
legitimate noncommercial or fair use because it was diverting Internet users to
a search engine with pop-up advertisements).
Moreover, Respondent has offered no evidence, and none is present in the record, to indicate that Respondent is commonly known by the <lippincott.com> domain name. Respondent’s WHOIS information identifies Respondent as “k,j.” Respondent has therefore failed to establish rights or legitimate interests it the disputed domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name when it is not known by the mark in question).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not deny that it has registered and is using the contested domain name to redirect Internet users to its website, which displays a search engine and links to unrelated websites. Because Respondent’s domain name is confusingly similar to Complainants LIPPINCOTT mark, Internet users are likely to become confused as to Complainant’s possible affiliation with Respondent’s website. And, presumably, Respondent profits from this confusion by earning click-through fees. As a result, Respondent’s use of the <lippincott.com> domain name to display links and a search engine constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where, among other things, a respondent’s domain name resolved to a website with links to third-party websites offering services similar to those of a complainant’s); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
To this may be added the
absence of any effort by Respondent to deny Complainant’s allegation that it
has registered and uses the disputed domain name in good faith. See, e.g.,
Bayer
Aktiengesellschaft v. Yongho Ko, D2001-0205 (WIPO Apr. 6, 2001).
For 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 <lippincott.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 2, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum