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Littleford Day Inc. v. NRM Equipment Company [2004] GENDND 665 (30 June 2004)

1. The Parties

The Complainant is Littleford Day Inc., Florence, Kentucky, United States of America, represented by Frost Brown Todd LLC, United States of America.

The Respondent is NRM Equipment Company, Sugar Land, Texas, United States of America.

2. The Domain Name and Registrar

The disputed domain name <littlefordday.com> is registered with Network Solutions, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2004. On March 17, 2004, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On March 17, 2004, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2004.

The Center appointed R. Eric Gaum as the sole panelist in this matter on April 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On April 26, 2004, Complainant notified the Center that the parties were negotiating a settlement and requested that the proceeding be temporarily suspended. The Center then suspended the proceedings on May 10, 2004.

On June 3, 2004, Complainant notified the Center that Registrant is unwilling to transfer the domain name, as originally believed, and requested that the proceeding be reinstated. On June 4, 2004, the Center reinstated the administrative proceeding.

4. Factual Background

Complainant has rights in the trademark, LITTLEFORD DAY. Complainant, Littleford Day, Inc., was founded in 1992. Since November 24, 1992, Complainant has used the mark LITTLEFORD DAY in commerce in connection with the following:

“commercial mechanical mixing machines for specialized processing operations, namely mixing, blending, drying, reacting, coating, compounding, granulating, dispensing, dissolving and agglomerating in many fields including pharmaceutical, plastics processing applications, food processing applications, chemical processing and mineral processing; and compounding machines for powdered plastic comprising a scale unit, compounder, cooler, water chiller, stabilizing dispensing unit, take-away unit and integrated automatic controls, sold as a unit.”

On May 9, 1995, Complainant obtained United States trademark registration for the mark, LITTLEFORD DAY (Registration No. 1892937). The trademark registration has achieved incontestable status in the U.S. Patent and Trademark Office.

Registrant obtained the <littlefordday.com> domain name on December 12, 2001. Registrant is in the business of buying, selling, trading, and reconditioning process machinery. According to Registrant’s website, it deals in almost the exact equipment recited in Complainant’s trademark registration.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name, <littlefordday.com>, is virtually identical to Complainant’s LITTLEFORD DAY trademark and that the only difference is the addition of “.com” to the disputed domain name.

Complainant also contends that Registrant has no rights or legitimate interests in the <littlefordday.com> domain name, that Complainant’s use of the mark predates Registrant’s registration of the domain name, that Complainant has not authorized Registrant to use or register the trademark, that Respondent has not been commonly known by “Littleford Day,” and that Registrant has not made a legitimate non-commercial or fair use of the domain name.

Further, Complainant alleges the following:

Under § 22 of the Lanham Act, registration of a mark on the Principal Register is constructive notice of the registrant’s claim of ownership of a mark. 15 U.S.C. § 22. Therefore, Respondent knew of Complainant’s mark when it registered littlefordday.com since Complaint’s registration LITTLEFORD DAY on the Principal Register on May 9, 1995, preceded Respondent’s registration of the disputed domain name on February 1, 2001.

As of March 5, 2004, when a person types www.littlefordday.com into a web browser, he or she is automatically redirected to a website located at www.nrmequipment.com. A screen print from that website is attached hereto as Annex 5. The heading at the top of the website indicates that the NRM Equipment Company buys, sells, trades, and reconditions process machinery.

NRM Equipment Company sells the same type of goods sold by Complainant. Respondent competes with Complainant in it s line of business.

Respondent is using the disputed domain name to divert Internet users looking for Complainant’s website to Respondent’s website, www.nrmequipment.com. In short, Respondent has registered the littlefordday.com trade name with the intent to intercept and siphon off traffic from its intended destination.

By using the domain name, littlefordday.com, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of products or services on its website. Respondent is not making a bona fide offer of goods or services since he is deceiving customers into believing that the competing goods and services offered on its website are being offered by or affiliated with the Complaint.

On January 30, 2004, Complainant’s authorized representative sent a letter to Respondent informing Respondent of Complainant’s rights in the LITTLEFORD DAY mark. In the letter, Complainant’s authorized representative demanded that Respondent (1) transfer the littlefordday.com domain name to Complainant; or (2) expressly withdraw the domain name. Respondent did not respond to the letter.

On February 2, 2004, Complainant’s authorized representative spoke with Respondent by telephone. During the conversation, Respondent was again informed of Complainant’s trademark rights in LITTLEFORD DAY. Respondent did not answer the question of why he chose to register the domain name, <littlefordday.com>. Additionally, Respondent indicated that he would be willing to sell the disputed domain name. See the Declaration of Complainant’s authorized representative, Nicole Vickroy-Hickey, attached hereto as Annex 6.

On February 12, 2004, Complainant’s authorized representative spoke with Respondent by telephone. During that telephone conversation, Respondent indicated that Respondent would not give up the disputed domain name unless Complainant purchased it. Instead of giving up the domain name registration, Respondent indicated that he might simply stop using the disputed domain name. When asked to provide a date that Respondent would stop using the domain name, Respondent indicated that if he was being threatened, he would (1) never give up his registration of the domain name; and (2) never turn it off. Respondent’s tone was threatening, and Respondent ended the conversation by hanging up the telephone on Complainant’s authorized representative. See the Declaration of Complainant’s authorized representative, Melissa Kern, attached hereto as Annex 7.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 The Uniform Domain Name Dispute Resolution Policy (the “Policy”), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

6.3 The Center forwarded notification of the complaint to the Respondent via post/courier and email in accordance with the contact details provided by the concerned registrar. The Center also forwarded notification of default to the Respondent via email.

6.4 Based on the methods employed to provide the Respondent with notice of the complaint and default the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by the Center.

6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.

6.6 As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all the credible allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).

Identical or Confusingly Similar

6.7 Based upon the registered trademark for LITTLEFORD DAY and the continuous use of the mark, the Complainant clearly has rights in the mark.

6.8 Complainant asserts that the domain name <littlefordday.com> is identical to the trademark LITTLEFORD DAY.

6.9 The Panel agrees with the Complainant that the only actual differences between the domain name and the trademark is “.com,” which is trivial.

6.10 The Panel finds that the <littlefordday.com> domain name is identical to the registered trademark LITTLEFORD DAY, and that the Complainant has established it has rights in the mark LITTLEFORD DAY, pursuant to paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.11 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <littlefordday.com>.

6.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <littlefordday.com>, pursuant to paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

6.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraphs 4(b)(i) and 4(b)(iv) state:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

6.15 On February 2, 2004, Respondent spoke to counsel for Complainant by telephone. During the discussion, Respondent indicated he would be willing to sell the disputed domain name. On February 12, 2004, Complainant’s authorized representative spoke with Respondent by telephone. During that telephone conversation, Respondent indicated that Respondent would not give up the disputed domain name unless Complainant purchased it. Instead of giving up the domain name registration, Respondent indicated that he might simply stop using the disputed domain name. When asked to provide a date that Respondent would stop using the domain name, Respondent indicated that if he was being threatened, he would (1) never give up his registration of the domain name; and (2) never turn it off. Respondent’s tone was threatening, and Respondent ended the conversation by hanging up the telephone on Complainant’s authorized representative.

6.16 In the absence of contrary evidence, Respondent’s offer to sell the domain name at issue to the Complainant coupled with his conduct during the various telephone discussions with counsel for Complainant is evidence of registration and use of the domain names in bad faith.

6.17 More importantly, the fact that Respondent used <littlefordday.com> to automatically redirect users to its website located at “www.nrmequipment.com” is evidence of bad faith. Respondent sells the same type of goods sold by Complainant and competes with Complainant in its line of business.

6.18 Respondent is using the disputed domain name to divert internet users looking for Complainant’s website to Respondent’s website, which is strong evidence of an intent to intercept and siphon off traffic from its intended destination.

6.19 By using the domain name, <littlefordday.com>, Respondent has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of products or services on its website.

6.20 Again, in the absence of contrary evidence, Respondent’s use of the domain name at issue to create a likelihood of confusion is strong evidence of registration and use of the domain names in bad faith.

6.21 The Panel finds the Complainant has established that the Respondent registered and used the domain name <littlefordday.com> in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <littlefordday.com>, be transferred to the Complainant.

R. Eric Gaum
Sole Panelist

Dated: June 30, 2004