L.L. Bean, Inc. v. Mrs Jello, LLC c/o
Domain Admin
Claim
Number: FA0503000449421
Complainant is L.L. Bean, Inc. (“Complainant”), represented
by Kevin R. Haley, of Brann and Isaacson,
184 Main Street, PO Box 3070, Lewiston, ME 04243-3070. Respondent is Mrs Jello, LLC c/o Domain Admin (“Respondent”), PO Box 120, Livingston, NJ
07039-0120.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <llbean.org>, registered with Universal
Registration Services, Inc. d/b/a NewDentity.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
30, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 1, 2005.
On
March 30, 2005, Universal Registration Services, Inc. d/b/a NewDentity
confirmed by e-mail to the National Arbitration Forum that the domain name <llbean.org>
is registered with Universal Registration Services, Inc. d/b/a NewDentity and
that Respondent is the current registrant of the name. Universal Registration Services, Inc. d/b/a
NewDentity has verified that Respondent is bound by the Universal Registration
Services, Inc. d/b/a NewDentity 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 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 21, 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@llbean.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 24, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <llbean.org>
domain name is identical to Complainant’s L.L. BEAN mark.
2. Respondent does not have any rights or
legitimate interests in the <llbean.org> domain name.
3. Respondent registered and used the <llbean.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, L.L. Bean, Inc., is a Maine corporation with
its headquarters in Freeport, ME.
Complainant markets and sells premium quality sporting goods and outdoor
products, apparel, general merchandise and a wide variety of goods via retail
outlets, catalogs and its Internet site at the <llbean.com> domain name.
Complainant holds a trademark registration with the United States Patent
and Trademark Office for the L.L. BEAN mark (Reg. No. 1,482,799 issued March
29, 1988).
Respondent registered the <llbean.org> domain name on
July 27, 2003. Respondent is using the
disputed domain name to divert Internet users to a website that offers links to
competitor’s products, as well as a search engine which generates numerous
pop-up and pop-under ads.
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.
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
asserted in this proceeding that it has rights in the L.L. BEAN mark through
registration with the United States Patent and Trademark Office. The Panel finds that registration of
Complainant’s mark is prima facie evidence that Complainant has rights
in the mark pursuant to Policy ¶ 4(a)(i).
See 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 and have acquired secondary
meaning.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The <llbean.org>
domain name registered by Respondent is identical to Complainant’s L.L. BEAN
mark because the domain name incorporates Complainant’s mark in its entirety,
and merely omits the period after each “L” in the mark and omits the space
between “L.L.” and the word “Bean.” These
differences are insufficient to negate the fact that Respondent’s domain name
is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Shirmax Retail Ltd. v. CES Mktg Group
Inc., AF-0104 (eResolution Mar. 20, 2000) (refusing to interpret Policy ¶
4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere
identicality of a domain name with a registered trademark is sufficient to meet
the first element [of the Policy], even if there is no likelihood of confusion
whatsoever”); see also Porto Chico Stores, Inc. v. Otavio Zambon,
D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or
confusing similarity is to be resolved “by comparing the trademark and the
disputed domain name, without regard to the circumstances under which either
may be used”); see also Chernow
Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that the use or absence of punctuation marks, such as hyphens, does not alter
the fact that a name is identical to a mark"); see also Mrs. World Pageants, Inc. v. Crown
Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that
punctuation is not significant in determining the similarity of a domain name
and mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA
102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the
domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM
mark).
Furthermore, the
addition of the generic top-level domain “.org” to Complainant’s registered
L.L. BEAN mark is irrelevant in determining confusing similarity and does not
distinguish the domain name pursuant to Policy ¶ 4(a)(i). See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Microsoft Corp.
v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> was identical to the complainant’s mark); see also Koninklijke Philips Elecs. NV v. Goktas,
D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name
<philips.org> was identical to the complainant’s PHILIPS mark); see
also BMW AG v. Loophole,
D2000-1156 (WIPO Oct. 26, 2000) (finding that there was “no doubt” that the domain
name <bmw.org> was identical to the complainant’s well-known and
registered BMW trademarks).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges that Respondent has no rights or legitimate interests in the <llbean.org>
domain name, containing Complainant’s L.L. BEAN mark in its entirety. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
that it does have rights to or legitimate interests in the domain name. Thus, due to Respondent’s failure to respond
to the Complaint, the Panel assumes that Respondent lacks rights and legitimate
interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name, it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding 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 credible evidence
that substantiates its claim of rights and legitimate interests in the domain
name); see also Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the respondents’ failure to respond can be construed as an admission that
they have no legitimate interest in the domain names).
Furthermore, the
Panel finds that Complainant has made the prima facie showing. Therefore, since Respondent has not
responded to the Complaint, the Panel is entitled to accept all reasonable
allegations and inferences in the Complaint as true. See Bayerische Motoren Werke AG v. Bavarian AG,
FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that, in the absence of a
response, the panel is free to make inferences from the very failure to respond
and assign greater weight to certain circumstances than it might otherwise do);
see also 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).
Respondent is
using the <llbean.org> domain name to redirect Internet users to a
website that features a search engine and links to various goods and services
which are in competition with Complainant.
The Panel assumes that Respondent earns pay-per-click fees for linking
users to the featured websites. Respondent’s
use of a domain name that is confusingly similar to Complainant’s popular L.L.
BEAN mark to divert Internet users interested in Complainant’s products and
services to a commercial website that offers a search engine and links to
Complainant’s competitors is not in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Sunho Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of Complainant’s
entire mark in infringing domain names makes it difficult to infer a legitimate
use"); see also 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); see also Black & Decker Corp.
v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding
that the respondent’s use of the disputed domain name to redirect Internet
users to commercial websites, unrelated to the complainant and presumably with
the purpose of earning a commission or pay-per-click referral fee did not
evidence rights or legitimate interests in the domain name).
Complainant
asserts that Respondent has no relationship with the <llbean.org>
domain name and that Complainant has not authorized Respondent to use
Complainant’s well-known L.L. BEAN mark.
Complainant insists that it has had no connection with Respondent. Since Respondent has failed to provide any
evidence establishing that it is commonly known by the disputed domain name,
the Panel finds that Respondent has not established rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark); see also 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).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <llbean.org> domain name to intentionally attempt to
attract Internet users interested in reaching Complainant’s <llbean.com>
website who inadvertently type the generic top-level domain “.org” instead of
“.com.” Additionally, Respondent
presumably benefits from these diversions through referral fees from links to
other commercial websites, some of which are in competition with
Complainant. Therefore, the Panel
determines that Respondent’s attempts to divert Internet users for commercial
gain by attracting Internet users to Respondent’s website through a likelihood
of confusion with Complainant’s mark is evidence of 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)); see also Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
Complainant uses
its L.L. BEAN mark to market and sell a wide variety of goods and services,
including apparel, outerwear, footwear, sporting goods, house wares, home
furnishings, and gifts. Respondent is
using the <llbean.org> domain name to link to websites that offer
competing products. Thus, the Panel
finds that Respondent’s use of a domain name confusingly similar to
Complainant’s registered marks to offer, inter alia, products and
services in direct competition with Complainant is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding
that the minor degree of variation from the complainant's marks suggests that
the respondent, the complainant’s competitor, registered the names primarily
for the purpose of disrupting the complainant's business).
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 <llbean.org> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
May 5, 2005
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