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 email@example.com 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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