DECISION

LTD Commodities LLC v. The Cupcake Patrol a/k/a John Zuccarini

Claim Number:  FA0307000170628

PARTIES

Complainant is LTD Commodities LLC, Bannockburn, IL (“Complainant”) represented by Irwin C. Alter, of Alter and Weiss.  Respondent is The Cupcake Patrol a/k/a John Zuccarini, Chiriqui, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ltdcommodties.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.com.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 21, 2003; the Forum received a hard copy of the Complaint on July 23, 2003.

On July 24, 2003, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the Forum that the domain name <ltdcommodties.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh Dba Joker.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 July 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 18, 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@ltdcommodties.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 August 23, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <ltdcommodties.com> domain name is confusingly similar to Complainant’s LTD COMMODITIES mark.

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

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

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

FINDINGS

The Complainant, LTD Commodities LLC has been in business since 1963 in the field of catalog mail order distributorships for general merchandise including toys, housewares, and gifts.  The Complainant also conducts business from its commercial website at <ltdcommodities.com>, which has been in existence since May 31, 1996.  Complainant owns the mark LTD COMMODITIES, which is a protected service mark registered in the United States Patent and Trademark Office, Registration No. 2,409,188, registered on November 29, 2000.

Respondent registered the disputed domain name on May 18, 2003.  Respondent is using the disputed domain name, <ltdcommodties.com>, to advertise pornographic websites. Respondent has no registration for the mark LTDCOMMODTIES and does not use this mark on any of the commercial advertising web pages that result when the Respondent’s domain name is entered. 

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 that it has rights in the LTD COMMODITIES mark through registration with the United States Patent and Trademark Office.  Furthermore, Respondent’s <ltdcommodties.com> domain name capitalizes on a common typing error.  Internet users who type Complainant’s domain name into the URL but omit the “i” between the “ltdcommod” and “ties” will be unwillingly diverted to Respondent’s website.  The omission of a letter in Complainant’s mark does not therefore create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.  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 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See 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); see also 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”).

Furthermore, based on Respondent’s failure to respond, it is presumed that Respondent lacks rights and legitimate interests in the disputed domain name.  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 in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent is using the disputed domain name in order to divert Internet users to an adult-oriented website.  The use of a domain name confusingly similar to Complainant’s in order to divert Internet users interested in Complainant’s services to an adult-oriented website is not a use 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).  See Eagle Outfitters, Inc.  v. Zuccarini  FA 155178 (Nat. Arb. Forum June 10, 2003) (finding that Respondent’s use of a domain name that was a misspelling of Complainant’s mark to redirect Internet users to an adult-oriented website was not a bona fide offering of goods or services); see also Paws, Inc. v. Zuccarini FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Respondent has not come forward with any proof and there is no evidence on record to establish that Respondent is commonly known as LTD COMMODTIES or <ltdcommodties.com>.  Therefore, Respondent has failed to establish that it has rights or 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 Respondent does not have rights in a domain name when 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 Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

It can be inferred that Respondent had knowledge of Complainant’s LTD COMMODITIES mark when it registered the disputed domain name because the domain name is a misspelling of Complainant’s mark.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Respondent intentionally, and for financial gain, has attracted Internet users to sites that promote online pornography web sites, by creating a likelihood of confusion with the Complainant’s mark.  This practice is evidence of bad faith registration use pursuant to Policy ¶ 4(b)(iv).  See Wells Fargo & Co. v. Party Night Inc. & Peter Carrington, FA 144647 (Nat. Arb. Forum March 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

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

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

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 9, 2003

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