LD Products, Inc. v. 4inkjetz.com c/o Ernest Knox
Claim Number: FA0703000949669
Complainant is LD Products, Inc. (“Complainant”), represented by Karl
S. Kronenberger, of Kronenberger Burgoyne, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <4inkjetz.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 29, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 2, 2007.
On April 12, 2007, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <4inkjetz.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 April 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 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@4inkjetz.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 9, 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 is a leading retailer of printer supplies and related products, including printer cartridges, laser toner cartridges, and refill kits.
Complainant markets and sells these products under the 4INKJETS mark, and has done so continuously since 1999.
Complainant has been featured in a news article in Internet Retailer, where it was ranked number 288 in the Top 400 Retail Websites.
Complainant has also won awards for customer service from Bizrate and Yahoo!
Complainant has registered the 4INKJETS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,998,115, issued September 20, 2005, filed August 3, 2004).
Respondent’s <4inkjetz.com> domain name, which it registered on March 25, 2004, resolves to a website with links to competing printer supply companies, including a link to the website of Complainant’s top competitor, 123Inkjets.
Respondent’s <4inkjetz.com> domain name is confusingly similar to Complainant’s 4INKJETS mark.
Respondent does not have any rights or legitimate interests in the <4inkjetz.com> domain name.
Respondent registered and uses the <4inkjetz.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 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 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 has registered the 4INKJETS service mark with
the USPTO, but this registration does not predate Respondent’s registration of
the <4inkjetz.com> domain
name. However, under the Policy,
Complainant need not hold a mark registration in order to satisfy Policy ¶ 4(a)(i). See Zee TV USA, Inc.
v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding
that a complainant need not own a registration for the ZEE CINEMA mark in order
to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Franklin Mint Federal Credit Union v. GNO, Inc., FA 860527 (Nat. Arb. Forum Feb. 23,
2007):
The ICANN dispute resolution policy is thus broad in scope in that the reference to a trademark or service mark in which Complainant has rights means that ownership of a registered mark is not required and unregistered or common law trademark or service mark rights will suffice to support a domain name Complaint under the Policy.
On the record before us, it is undisputed that Complainant
has continuously and extensively used the 4INKJETS mark since 1999 in
connection with its printer supply business.
Complainant has also received awards for its conduct of business and
generated significant goodwill in its mark.
As a result, Complainant has sufficiently shown that its mark has
acquired secondary meaning. Complainant
has therefore established common law rights in the mark pursuant to Policy ¶
4(a)(i). See
With respect to the confusing similarity of the <4inkjetz.com> domain name to Complainant’s 4INKJETS mark, the domain name is phonetically identical and merely replaces the letter “s” with “z” and adds the generic top-level domain “.com.” Neither alteration is a distinguishing difference. Consequently, the disputed domain name is confusingly similar to the mark within the meaning of Policy ¶ 4(a)(i). See 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 the mark with the letter “e”); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to a complainant’s YAHOO mark).
The Panel thus finds that Complainant has satisfied Policy ¶
4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has the initial burden of proof to establish that Respondent lacks rights or legitimate interests in the contested domain name. Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13,
2007) (finding that once a prima facie case has been established by a
complainant under Policy ¶ 4(c), the burden shifts to a respondent to
demonstrate its rights or legitimate interests in a disputed domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <4inkjetz.com> domain name. 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 Geocities
v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that a
respondent has no rights or legitimate interests in a domain name because that
respondent never submitted a response or provided the panel with evidence to
suggest otherwise). However, the Panel will now examine the record to determine
if there is any basis for concluding that Respondent has rights or legitimate
interests under Policy ¶ 4(c).
In this connection, we first note that Respondent has
registered the <4inkjetz.com>
domain name under the name “4inkjetz.com c/o Ernest Knox,” but there is no
evidence in the record suggesting that Respondent is actually commonly known by
the disputed domain name. Consequently,
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.
Moreover, Respondent’s use of the <4inkjetz.com> domain name to operate a commercially oriented
website with links to Complainant’s competitors resembles the cases of Expedia,
Inc. v. Compaid, FA 520654
(Nat. Arb. Forum Aug. 30, 2005) and Wal-Mart Stores, Inc.
v. Power of Choice Holding Co., FA
621292 (Nat. Arb. Forum
Feb. 16, 2006). In both cases,
respondents used confusingly similar domain names to divert Internet users seeking
certain complainants’ goods and services to websites competing with those
complainants. Both panels found that
such use did not constitute 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). In
line with these cases, Respondent has not used the <4inkjetz.com>
domain name in connection with 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) by displaying links to the websites of competing companies.
The Panel therefore finds that Complainant has satisfied
Policy ¶ 4(a)(ii).
Respondent’s <4inkjetz.com>
domain name resolves to a website displaying links to Complainant’s competitors
in the printer supply industry. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb.
Forum July 24, 2006), a panel found that a respondent engaged in bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) by using disputed domain
names to operate a commercial search engine with links to the products of a
complainant and to complainant’s competitors, as well as by diverting Internet
users to several other domain names. Similarly, in St. Lawrence
Univ. v. Nextnet Tech, FA 881234
(Nat. Arb. Forum Feb. 21, 2007) a panel came to a similar conclusion,
stating, “This Panel concludes that by redirecting Internet users seeking
information on Complainant’s educational institution to competing websites,
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”
Respondent’s conduct is similar. We therefore conclude that Respondent
has registered and is using the disputed domain name in bad faith according to
Policy ¶ 4(b)(iii).
Moreover, by diverting Internet users to a website featuring
links to Complainant’s competitors, Respondent presumably receives
click-through fees and thus profits from the goodwill associated with the
4INKJETS mark. In Allianz
of America Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006), a panel found bad faith
registration and use under Policy ¶ 4(b)(iv) where a respondent diverted
Internet users searching for a complainant to its own website and likely profited
from click-through fees. Respondent here
has likewise registered and is using the disputed domain name in bad faith as contemplated
by Policy ¶ 4(b)(iv).
See The
For these reasons, the Panel finds that Complainant has
satisfied Policy ¶ 4(a)(iii).
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 <4inkjetz.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 21, 2007
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