DECISION

LTD Commodities LLC v. Herman Bowman d/b/a sci

Claim Number: FA0310000203131

PARTIES

Complainant is LTD Commodities LLC (“Complainant”) represented by Irwin C. Alter of Alter and Weiss, 19 S. LaSalle, Suite 1650, Chicago, IL, 60603. Respondent is Herman Bowman d/b/a sci, 2531 E. Devon Avenue, Elk Grove Village, IL 60007 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ltdcommoditys.com> registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically October 10, 2003; the Forum received a hard copy of the Complaint October 15, 2003.

On October 13, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the Forum that the domain name <ltdcommoditys.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and thereby has 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 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 5, 2003, 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@ltdcommoditys.com by e-mail.

On October 24, 2003, Respondent submitted to the Forum by fax the following in its entirety:

As per your request, I am sending you an explanatory letter regarding the involvement with domain name “ltdcommoditys.com” that Herman Bowman, SCI had.

As you are well aware, this domain listing is not active or connected to any site. In a promotion by our marketing department, the “ltdcommoditys.com” name was rendered. Before further business actions by SCI could take place, we deemed the name as inappropriate and unethical. Thus, it has never been, and never will be activated as a live Internet link. The only reason that it remains listed as being “owned” by SCI is because we are simply waiting [for] the registration of said name to expire.

This letter will serve as your “cease and desist” compliance. We, therefore, are more than willing to transfer said name to LTD Commodities effective forthwith. Thank you for your cooperation and please feel free to contact me at any time regarding this matter.

Having received no formal Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 12, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any formal Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <ltdcommoditys.com>, is confusingly similar to Complainant’s LTD COMMODITIES mark.

2. Respondent has no rights to or legitimate interests in the <ltdcommoditys.com> domain name.

3. Respondent registered and used the <ltdcommoditys.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns trademark registrations with the United States Patent and Trademark Office for the LTD COMMODITIES mark (Registration Number 2,409,188, registered on November 28, 2000) and the LTD COMMODITIES, INC. mark (Registration Number 2,315,412, registered on February 8, 2000) in relation to the catalog mail-order distributorship for general merchandise, including, inter alia, toys, jewelry and watches.

Complainant has been in business since 1963 in the field of catalog mail-order distributorships. Complainant also conducts business from its commercial website at the <ltdcommodities.com> domain name, which has been in existence since May 31, 1996.

Respondent registered the <ltdcommoditys.com> domain name April 5, 2002. Respondent has not linked the disputed domain name to an active website since the domain name was registered.

DISCUSSION

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 will draw such inferences as the Panel 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.

Identical to and/or Confusingly Similar

Complainant demonstrated by extrinsic proof in this proceeding that it has rights in the LTD COMMODITIES mark through registration with the USPTO. 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”).

Complainant contends that the domain name registered by Respondent, <ltdcommoditys.com>, is confusingly similar to Complainant’s LTD COMMODITIES mark because the disputed domain name appropriates a simple misspelling of Complainant’s mark by substituting the letters “ie” with the letter “y.” Respondent’s appropriation of a misspelled version of Complainant’s mark does not serve to significantly differentiate the domain name from the mark for purposes of Policy ¶ 4(a)(i). 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 Complainant’s HEWLETT-PACKARD mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Respondent has not come forward with a formal Response countering the Complainant’s substantive allegations in this proceeding. Therefore, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, based on Respondent’s failure to counter the allegations in the Complaint, the Panel presumes that Respondent lacks any rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent has not linked the <ltdcommoditys.com> domain name to an active website since the domain name was registered April 5, 2002. Furthermore, in its communications with Complainant and the Forum, Respondent offered to transfer the <ltdcommoditys.com> domain name registration to Complainant. The Panel finds that Respondent’s failure to use the disputed domain name for a period of more than one and a half years and its offer to transfer the domain name registration suggest that Respondent lacks rights to and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Ritz-Carlton Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute, Respondent had not used the domain names in connection with any type of bona fide offering of goods and services); see also Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding that Respondent’s willingness at the onset of the Complaint to transfer the domain names shows it lacks any legitimate interest or rights in the names); see also Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights).

Respondent has not submitted any proof and no evidence in the record indicates that  Respondent is commonly known by LTD COMMODITYS or <ltdcommoditys.com>. Thus, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain under Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent does not have rights in a domain name when Respondent is not known by the mark).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s registration and its subsequent failure to link the <ltdcommoditys.com> domain name to any active website for more than one and a half years demonstrates passive holding of the domain name. The passive holding of a domain name can constitute bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

Moreover, Respondent’s offer to transfer the <ltdcommoditys.com> domain name registration after being served with the Complaint suggests that the disputed domain name was registered and used in bad faith. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding Respondent’s willingness to transfer and its failure to develop the site are evidence of its bad faith registration and use); see also Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to address Complainant’s allegations coupled with its willingness to transfer the names is evidence of bad faith registration and use).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <ltdcommoditys.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: November 26, 2003.

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1069.html