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Generic Top Level Domain Name (gTLD) Decisions |
LTD Commodities LLC v. Henry Chan
Claim
Number: FA0303000152617
Complainant is
LTD Commodities LLC, Bannockburn, IL, USA (“Complainant”) represented
by Irwin C. Alter, of Alter and Weiss. Respondent is Henry
Chan, Hung Hom, Hong Kong, CHINA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ltdcommedities.com>,
<ltdcommidties.com>, <ltdcommondities.com>,
<ltdcommoties.com>, <ltdcommodities.net>,
<ltdcommidies.com>, and
<thelakesidecollection.com>, registered with Iholdings.Com, Inc. d/b/a
Dotregistrar.Com.
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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on March 31, 2003; the
Forum received a hard copy of the
Complaint on March 31, 2003.
On
Apr 01, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to
the Forum that the domain names <ltdcommedities.com>,
<ltdcommidties.com>, <ltdcommondities.com>,
<ltdcommoties.com>, <ltdcommodities.net>,
<ltdcommidies.com>, and
<thelakesidecollection.com> are registered with Iholdings.Com, Inc.
d/b/a Dotregistrar.Com and that Respondent is the current registrant of the
names. Iholdings.Com,
Inc. d/b/a Dotregistrar.Com has verified that Respondent
is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.Com 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 7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
April 28, 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@ltdcommedities.com, postmaster@ltdcommidties.com, postmaster@ltdcommondities.com,
postmaster@ltdcommoties.com,
postmaster@ltdcommodities.net, postmaster@ltdcommidies.com,
and postmaster@thelakesidecollection.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
May 7,2003, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the Forum appointed Hon. Ralph
Yachnin 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.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ltdcommedities.com>,
<ltdcommidties.com>, <ltdcommondities.com>, <ltdcommoties.com>,
<ltdcommodities.net>,
<ltdcommidies.com>, and <thelakesidecollection.com> domain names are
confusingly similar and/or identical to Complainant’s LTD COMMODITIES and THE
LAKESIDE COLLECTION marks.
2. Respondent does not have any rights or
legitimate interests in the <ltdcommedities.com>,
<ltdcommidties.com>, <ltdcommondities.com>,
<ltdcommoties.com>, <ltdcommodities.net>,
<ltdcommidies.com>, and
<thelakesidecollection.com> domain names.
3. Respondent registered and used the <ltdcommedities.com>,
<ltdcommidties.com>, <ltdcommondities.com>,
<ltdcommoties.com>, <ltdcommodities.net>,
<ltdcommidies.com>, and
<thelakesidecollection.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
been in business since 1963 in the field of catalog mail order distributorships
for general merchandise including
toys, housewares and gifts. Complainant spends millions of dollars each
year to print, purchase, produce and advertise its LTD COMMODITIES catalog. Complainant also provides access to its
services online at <ltdcommodities.com>, which has been in existence
since May 31, 1996.
Complainant owns
a service mark for LTD COMMODITIES registered with the United States Patent and
Trademark Office (“USPTO”) (Reg.
No. 2,409,188). Complainant has also registered numerous services marks with the
USPTO for marks containing LTD COMMODITIES, INC., including Reg.
No.
2,315,412.
Complainant has
recently expanded its catalog services to include a catalog entitled THE
LAKESIDE COLLECTION, which offers substantially
the same goods for sale but
operates under different management and an alternative financial method. Complainant has registered THE LAKESIDE
COLLECTION service mark with the USPTO as Registration Numbers 2,606,505 and
2,432,488.
Respondent
registered the disputed domain names during a period of time starting on June
28, 2002 extending to December 9, 2002.
Currently, Respondent uses the domain names for a generic search engine
website. This website provides links
for a variety of subject matters, including gambling, shopping, electronics,
finance, travel, etc.
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 established its rights in the LTD COMMODITIES and THE LAKESIDE COLLECTION
service marks through proof of registration
with the USPTO.
Respondent’s <ltdcommedities.com>,
<ltdcommidties.com>, <ltdcommondities.com>,
<ltdcommoties.com> and <ltdcommidies.com> domain names
all represent either a misspelled version or typographical misrepresentation of
Complainant’s LTD COMMODITIES mark. The
domain names appear to have no meaning independent from the mark LTD
COMMODITIES. Moreover, registering
multiple domain names that are misspellings or typographical errors of the LTD
COMMODITIES mark evidences a
deliberate intent by Respondent to create
confusingly similar domain names. Thus,
the Panel finds that the domain names are confusingly similar to Complainant’s
LTD COMMODITIES mark. See Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth
“w” or the
omission of periods or other such generic typos do not change the Respondent’s
infringement on a core trademark held by
Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not
create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks).
Furthermore,
Respondent has two domain names, <ltdcommodities.net> and <thelakesidecollection.com>,
that wholly reflect Complainant’s LTD COMMODITIES and THE LAKESIDE COLLECTION
marks. The absence of space between
words of a mark and the addition of a top-level domain are inconsequential
factors in a Policy ¶ 4(a)(i)
“identical” analysis, because spaces are not
permitted in second level domains and top-level domains are required. Hence, Respondent’s <ltdcommodities.net>
and <thelakesidecollection.com> domain names are identical to
Complainant’s LTD COMMODITIES and THE LAKESIDE COLLECTION marks,
respectively. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(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”).
The Panel finds
that Policy ¶ 4(a)(i) is satisfied.
Complainant has
submitted a prima facie Complaint, in part alleging that Respondent has
no rights or legitimate interests in the disputed domain names. Respondent failed to answer Complainant’s
allegations. Respondent’s failure to
contest the Complaint is tantamount to admitting the truth of Complainant’s
allegations. In addition, Complainant’s
contention that Respondent lacks rights or legitimate interests in the disputed
domain names shifts the
burden on Respondent to articulate such rights or
interests. In the absence of a Response
the Panel will presume that Respondent lacks rights or legitimate interests in
the disputed domain names. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with
respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name).
Furthermore, the
failure to respond permits the Panel to accept all reasonable allegations as
true, unless contradicted by the evidence
on record. The Panel will also draw all reasonable inferences in
Complainant’s favor. See 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”);
see also Vertical 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).
Respondent uses
all the disputed domain names to direct Internet traffic to the same generic
search engine website. The website
contains a variety of topical links, including gambling, travel and
shopping. Complainant operates in the
catalog shopping industry so Respondent’s use of the disputed domain names to
lead Internet traffic to
its shopping links constitutes a competitive use of
the domain names. From the quantity of
domain names that reflect confusingly similar or identical versions of
Complainant’s mark and the fact that some
domain names do not even form a
coherent phrase, the Panel concludes that Respondent is using Complainant’s
marks to divert Internet
traffic to its generic search engine website. Such a use constitutes a lack of rights or
legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and
(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9,
2000) (finding no legitimate use when Respondent was diverting consumers to its
own website by
using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using the
Complainant’s mark by redirecting Internet traffic to its own website).
Complainant
argues that Respondent is not known by any of the disputed domain names. Because of the nonsensical nature of some of
the domain names (i.e., misspelled or typographic reflections of Complainant’s
mark),
the Panel finds that Respondent could not be known by those domain
names. In addition, the WHOIS
information for all the domain names contains common contact information,
listing Henry Chan as the Registrant.
The Panel therefore finds that Respondent’s common identity is Henry
Chan and Policy ¶ 4(c)(ii) does not apply to assist Respondent. See Medline, Inc. v. Domain Active
Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb.
6, 2003) (“Considering the nonsensical nature of the [<wwwmedline.com>]
domain name and its similarity to Complainant’s
registered and distinctive
[MEDLINE] mark, the Panel concludes that Policy ¶ 4(c)(ii) does not apply to
Respondent”); 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).
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the
disputed domain names; thus, Policy ¶ 4(a)(ii)
is satisfied.
Respondent’s
numerous registrations of domain names that are misspellings or typographical
errors of the LTD COMMODITIES mark evidence
intent to trade on the mark’s
associated goodwill. Respondent’s bad
faith is further demonstrated by Respondent’s use of the disputed domain names
to link to a generic search engine
website.
Presumably, Respondent is profiting from the increased traffic the
domain names bring to the resulting website or various links on
the
website. Respondent deliberately uses
Complainant’s marks to capitalize on consumer error when typing the marks into
a second level domain. Thus, those that
are using Complainant’s marks to access Complainant’s services could
potentially end up at Respondent’s website and
the result would cause confusion
over Complainant’s affiliation.
Respondent’s actions fall squarely within the parameters of Policy ¶
4(b)(iv), and thus the Panel finds that Respondent registered
and used the
disputed domain names in bad faith. See
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)); see also G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that Respondent registered and used the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain
name to attract Internet users to its commercial website).
The Panel finds
that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ltdcommedities.com>, <ltdcommidties.com>,
<ltdcommondities.com>, <ltdcommoties.com>,
<ltdcommodities.net>,
<ltdcommidies.com>, and <thelakesidecollection.com> domain names be TRANSFERRED
from Respondent to Complainant.
Hon.
Ralph Yachnin,
Justice, Supreme Court, NY (Ret.)
Dated: May 8, 2003
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