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Generic Top Level Domain Name (gTLD) Decisions |
LTD Commodities LLC v. Ling Shun Shing
Claim
Number: FA0410000339018
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 Ling Shun Shing (“Respondent”),
138 Yi Xue Yuan Rd., Shanghai, 200032, P.R. China, 01146798987.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <ltdcomdities.com> and
<ltdccommodities.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 electronically on October
5, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 7, 2004.
On
October 8, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain
names <ltdcomdities.com>
and <ltdccommodities.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
October 14, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 3, 2004 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@ltdcomdities.com and postmaster@ltdccommodities.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
November 16, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed Hon.
Ralph Yachnin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <ltdcomdities.com> and
<ltdccommodities.com> domain names are confusingly similar to
Complainant’s LTD COMMODITIES mark.
2. Respondent does not have any rights or
legitimate interests in the <ltdcomdities.com> and <ltdccommodities.com>
domain names.
3. Respondent registered and used the <ltdcomdities.com>
and <ltdccommodities.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, LTD Commodities LLC, is in the business of
catalog mail order distributorships for general merchandise including toys,
housewares,
and gifts. Complainant
acquired the service marks of LTD Commodities, Inc. on January 15, 2003,
through assignment from that company.
Complainant holds trademark registrations with the United States Patent
and Trademark Office for the LTD COMMODITIES mark (Reg. No.
2,409,188 issued
November 28, 2000 and Reg. No. 2,315,412 issued February 8, 2000). Complainant (formerly LTD Commodities, Inc.)
has been in business since 1963 and spends millions of dollars each year to
print, purchase,
make, and advertise its catalogs. Additionally, Complainant conducts business through its
commercial website at the <ltdcommodities.com> domain name, which has
existed since May 31, 1996.
Respondent
registered the <ltdcomdities.com> and <ltdccommodities.com>
domain names on October 4, 2002 and is using the domain names to divert
Internet users to Respondent’s website, which displays a
generic search engine
and hyperlinks to various websites unrelated to Complainant.
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 in this proceeding that it has rights in the LTD COMMODITIES mark
through registration with the United
States Patent and Trademark Office and by
continuous use of its mark in commerce for the last forty-one years. 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that 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).
The <ltdcomdities.com>
and <ltdccommodities.com> domain names registered by
Respondent are confusingly similar to Complainant’s LTD COMMODITIES mark because
the domain names are
comprised of simple misspellings of Complainant’s
mark. The mere misspelling of
Complainant’s registered mark by adding or omitting one letter is not
sufficient to distinguish the domain
names from Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding that a domain name which differs by only one letter from a
trademark has a greater tendency
to be confusingly similar to the trademark
where the trademark is highly distinctive); 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <ltdcomdities.com>
and <ltdccommodities.com> domain names which are confusingly
similar to Complainant’s LTD COMMODITIES mark.
The Panel assumes that Respondent lacks rights and legitimate interests
in the disputed domain names because Respondent failed to
respond to the
Complaint. In fact, once Complainant
makes a prima facie case in support of its allegations, the burden
shifts to Respondent to show that it does have such rights or legitimate
interests
pursuant to Policy ¶ 4(a)(ii).
See 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 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,
where Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is
appropriate to accept as true all allegations
of the Complaint”); see also
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.”).
Respondent is
using the <ltdcomdities.com> and <ltdccommodities.com>
domain names to redirect Internet users interested in Complainant’s products
and services to Respondent’s website, which displays
a generic search engine
and links to products and services unrelated to Complainant. Respondent’s use of domain names confusingly
similar to Complainant’s LTD COMMODITIES mark to divert Internet users
searching for
Complainant’s products and services to Respondent’s commercial
website, containing only a search engine and hyperlinks, 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 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
Computer Doctor Franchise Sys., Inc. v.
Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that
Respondent’s website, which is blank but for links to other websites, is
not a
legitimate use of the domain names); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck
surfers into a site sponsored
by Respondent hardly seems legitimate”).
Furthermore,
nothing in the record suggests that Respondent is commonly known by the <ltdcomdities.com>
and <ltdccommodities.com> domain names, and Complainant did
not authorize or license Respondent to use Complainant’s LTD COMMODITIES mark. Therefore, Respondent has not established
rights or legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known
by the
domain name prior to registration of the domain name to prevail"); 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).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <ltdcomdities.com> and <ltdccommodities.com>
domain names to attempt to attract Internet users to Respondent’s commercial
website through a likelihood of confusion with Complainant’s
LTD COMMODITIES
mark. Respondent’s use of a domain name
confusingly similar to Complainant’s mark to divert Internet users to
Respondent’s website, which
is unrelated to Complainant, for Respondent’s
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶
4(b)(iv). See 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);
see
also Kmart v. Khan, 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 State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe
on Complainant’s
goodwill and attract Internet users to Respondent’s website).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of a domain name, additional factors
can also be used to support findings of bad faith registration and use. The Panel looks to the totality of the
circumstances. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel
must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
Respondent’s
registration of the <ltdcomdities.com> and <ltdccommodities.com>
domain names, which are comprised of simple misspellings of Complainant’s LTD
COMMODITIES mark, suggests that Respondent knew of
Complainant’s rights in the
mark. The Panel finds that Respondent
chose the disputed domain names based on the distinctive and well-known
qualities of Complainant’s
mark and that this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling
of words with intent to intercept and siphon off
traffic from its intended
destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of
itself evidence of bad faith.”); see also Medline, Inc.
v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (stating that “in typosquatting cases, such as this one, it
would be difficult for Respondent to prove to the Panel that it did not have
actual knowledge
of Complainant’s distinctive MEDLINE mark when it registered
the infringing <wwwmedline.com> domain name”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ltdcomdities.com> and <ltdccommodities.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 29, 2004
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