DECISION

LM&B Catalog, Inc. v. RealTimeInternet.com

Claim Number: FA0208000123895

PARTIES

Complainant is LM&B Catalog, Inc., Tucson, AZ (“Complainant”) represented by Devin Odell, of Brown and Bain.  Respondent is RealTimeInternet.com, Fort Wayne, IN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <lewmagram.com>, registered with Dotster.

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 on August 27, 2002; the Forum received a hard copy of the Complaint on August 30, 2002.

On August 29, 2002, Dotster confirmed by e-mail to the Forum that the domain name <lewmagram.com> is registered with Dotster and that Respondent is the current registrant of the name.  Dotster verified that Respondent is bound by the Dotster 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 September 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 23, 2002, 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@lewmagram.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 October 15, 2002, 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 Response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations:

The  <lewmagram.com> domain name is identical to Complainant's LEW MAGRAM mark.   Respondent has no rights or legitimate interests in the disputed domain name. Respondent registered and used the disputed domain name in bad faith.

B. Respondent failed to submit a Response.

FINDINGS

Complainant registered its LEW MAGRAM mark with the United States Patent and Trademark Office in 1989 as Registration Number 1,554,789.  Complainant has used the mark for more than fifty years in relation to its mail order catalog services.  Complainant has mailed more than 34 million catalogs and has spent more than $19 million in promotional costs since 2000, and as a result of its efforts, Complainant has received more than 500,000 orders.  In 2002, Complainant will mail more than 11 million catalogs, and expects to receive 180,000 orders.

Respondent registered the disputed domain name on December 28, 2001.  Respondent uses the disputed domain name to divert Internet users to a web page with links to numerous sites on the Internet, including websites that directly compete with Complainant’s services.  Respondent has registered numerous domain names that infringe on the rights of others, including <brownstonestudio.com>, another domain name that is identical to another mark held by this same Complainant.  Complainant’s investigation revealed that Respondent has been a party to many UDRP proceedings in relation to infringing domain names. Respondent is not licensed by Complainant to use the LEW MAGRAM mark.

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 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the LEW MAGRAM mark through registration with the United States Patent and Trademark Office and by continuous use.  Furthermore, Respondent’s <lewmagram.com> domain name is identical to Complainant’s mark because it incorporates the entirety of Complainant’s mark and adds the generic top-level domain “.com.”  The addition of a generic top-level domain is irrelevant because it is a required element of any domain name, and therefore its addition does not create any distinction between the domain name and Complainant’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., [2000] USCA2 33; 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000) ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com").

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

Rights to or Legitimate Interests

Respondent did not respond in this proceeding and therefore the Panel may assume that Respondent lacks rights and legitimate interests in the disputed domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent failed to invoke any circumstance that could demonstrate rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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).

Respondent is using a domain name that is identical to Complainant’s mark in order to divert Internet users interested in Complainant’s goods and services to a website that features various web links, including links to direct competitors of Complainant.  The use of a website, identical to Complainant’s mark, to divert Internet users to competing goods for the benefit of Respondent is not considered to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate.”).

Respondent has not come forward with evidence to establish that it is commonly known as LEW MAGRAM or <lewmagram.com>.  Therefore, Respondent has not established 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

Respondent has engaged in a pattern of registering domain names that infringe on the marks of others.  Furthermore, this is the second domain name Respondent registered that is identical to one of Complainant’s marks.  As a result of this continuing pattern of behavior Respondent has exemplified bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith).

Respondent is diverting Internet users to a website that provides links to various websites and the Panel may infer that Respondent is doing so to make a profit from the Internet traffic that it diverts to any of the websites featured at the disputed domain name.  Therefore, Respondent is using a domain name identical to Complainant’s mark in order create a likelihood of confusion as to the source and sponsorship of those services for Respondent’s own commercial gain.  This type of use is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its website for commercial gain).

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 the requested relief shall be hereby granted.

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

Hon. Carolyn Marks Johnson, Panelist

Dated: October 29, 2002.

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