DECISION

LTD Commodities LLC v. Mahmoud Nadim

Claim Number:  FA0311000207281

PARTIES

Complainant is LTD Commodities LLC, Bannockburn, IL (“Complainant”) represented by Irwin C. Alter, of Alter & Weiss, 19 S. LaSalle, Suite 1650, Chicago, IL 60603.  Respondent is Mahmoud Nadim, P.O. Box No. 206, Dhaka, 21014, BD (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ltdcommodoties.com>, registered with Enom, Inc.

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 31, 2003; the Forum received a hard copy of the Complaint on November 3, 2003.

On November 4, 2003, Enom, Inc. confirmed to the Forum that the domain name <ltdcommodoties.com> 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 November 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 26, 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@ltdcommodoties.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 Forum transmitted to the parties a Notification of Respondent Default.

On December 4, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 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. Respondent’s <ltdcommodoties.com> domain name is confusingly similar to Complainant’s LTD COMMODITIES mark.

2. Respondent does not have any rights or legitimate interests in the <ltdcommodoties.com> domain name.

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

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

FINDINGS

LTD Commodities, Inc. successfully registered the LTD COMMODITIES mark with the United States Patent and Trademark Office (“USPTO”) on November 28, 2000 (Reg. No. 2409188).  LTD Commodities, Inc. first used the mark in commerce in 1963.  On January 15, 2003, LTD Commodities, Inc. assigned its service mark to Complainant.  Complainant is in the business of providing catalog mail order distributorships for general merchandise.

Respondent registered the disputed domain name, <ltdcommodoties.com>, on February 4, 2000.  Respondent uses the domain name to route Internet users to <usseek.com>, which displays several commercial links.

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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the LTD COMMODITIES mark through registration with the USPTO, and continuous use since 1963.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption. See also 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 Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) finding that the failure of Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”.

In comparing Complainant’s marks with Respondent’s domain name, a confusing similarity is manifest, pursuant to Policy ¶ 4(a)(i), because Respondent merely misspelled Complainant’s mark by changing the first “i” in COMMODITIES to an “o.”  See Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) finding the domain name <victoriasecret.com> confusingly similar to Complainant’s trademark, VICTORIA’S SECRET; 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; see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)  finding the domain names <tdwatergouse.com> and <dwaterhouse.com> virtually identical to Complainant’s TD WATERHOUSE name and mark.

Therefore, Complainant has established Policy ¶ 4(a)(i). 

Rights or Legitimate Interests

Respondent has not asserted any rights or legitimate interests in the domain name.  Therefore, the Panel may accept all reasonable inferences of fact in the allegations of Complainant, without the benefit of a Response.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint; see also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true; see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that, where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on 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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names.

Additionally, there is no evidence that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The WHOIS registration information fails to imply that Respondent is commonly known by the name.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating, “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark.

Moreover, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), because it routes unsuspecting Internet users, who are seeking Complainant, to a website containing a series of links to commercial sites, presumably for referral fees.  See Disney Enters, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) finding that Respondent’s diversionary use of 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 TM Acquisition Corp. v. Sign Guards a/k/a William Moore, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, was not a bona fide offering of goods or services; see also U.S. Fran. Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark to attract Internet users to an unrelated business was not a bona fide offering of goods or services.

Therefore, Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used <ltdcommodoties.com>, to divert Internet users to a series of unrelated commercial links, presumably for referral fees.  Thus, it is reasonable to infer that Respondent’s purpose of registration and use was to create confusion with Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant; see also H-D Mich., Inc. v. Petersons Auto. a/k/a Larry Petersons, FA 135608 (Nat. Arb. Forum Jan. 8, 2003) finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness; see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

Therefore, Respondent has established Policy ¶ 4(a)(iii).

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 <ltdcommodoties.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  December 18, 2003

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