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Adorama, Inc. v. LaPorte Holdings, Inc. [2005] GENDND 1133 (1 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Adorama, Inc. v. LaPorte Holdings, Inc.

Case No. D2005-0240

1. The Parties

The Complainant is Adorama, Inc., New York, New York, United States of America, represented by Phillips Nizer LLP, New York, New York, United States of America.

The Respondent is LaPorte Holdings, LLC., Los Angeles, California, represented by J. Jason Dollar, United States of America.

2. The Domain Name and Registrar

The disputed domain name <adarama.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2005. On March 4, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On March 8, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 16, 2005. The Center verified that the Complaint, together with the amendment to 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 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2005.

The Center appointed Kevin C. Trock as the sole panelist in this matter on May 13, 2005. 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.

4. Factual Background

The domain name at issue is <adarama.com>. The domain name is registered to LaPorte Holdings, Inc. The Complainant is Adorama, Inc. The Complainant claims ownership of U.S. Trademark Registration No. 2,210,654 for the mark ADORAMA for use with photographic, video and imaging equipment, accessories and supplies, namely, flash meters, 35 mm film loaders, photographic stands, storage cases, binoculars, telescopes; and computers; electronic equipment, namely, television, television monitors, video and audio recorders and telephones in Class 9 and retail store services and mail order services featuring photographic equipment, video equipment and computers in Class 35. The Complainant also owns the registration for the domain name <adorama.com>.

5. Parties’ Contentions

A. Complainant

Complainant contends that it was organized in 1987, to conduct a retail business in the City of New York, featuring photography, video and imaging equipment and accessories, including cameras, lenses, binoculars and film. In 1997, Complainant alleges that it established a web site under the domain name <adorama.com> and commenced selling these products on its web site.

As noted above, the United States Patent and Trademark Office issued Trademark Registration No. 2,210,654 for the mark ADORAMA for use with photographic, video and imaging equipment, accessories and supplies, among other things, to Complainant on December 15, 1998.

Complainant alleges that the mark is currently being used in connection with cameras and on Complainant’s web site as a service mark in connection with the sale of a wide variety of cameras, photographic equipment, computers and television and video equipment.

Complainant contends that it spends in excess of one million dollars per year advertising the sale of products under the ADORAMA mark, and that the ADORAMA mark has come to be recognized by the public as identifying Complainant’s products and services.

Complainant further alleges that on or about February 13, 2003, Respondent registered the domain name <adarama.com> with the registrar NameKing, Inc. Complainant further alleges that Respondent’s <adarama.com> web site features links to other web sites which feature, among other things, the sale of the same products sold by Complainant under the ADORAMA mark, namely photographic equipment including cameras, supplies, lenses and binoculars.

Complainant asserts that in late November 2004, it first learned of Respondent’s <adarama.com> web site. Complainant further asserts that on November 24, 2004, its attorney wrote Respondent and apprised him of Complainant’s rights in the ADORAMA mark and requested that Respondent cease using the <adarama.com> domain name. This was apparently followed up by another letter dated December 20, 2004.

B. Respondent

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

6. Discussion and Findings

In order to prevail, the Complainant must prove the following three elements: (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 the domain name; and (iii) Respondent has registered the domain name and is using it in bad faith. (Policy, paragraph 4(a)).

The Respondent has not filed a response to the Complaint. Pursuant to the Rules, paragraph 5(ix)(e), the Panel will decide the dispute based on the Complaint.

A. Identical or Confusingly Similar

Complainant was organized in 1987, to conduct a retail business in New York City selling photography, video and imaging equipment and accessories. On December 15, 1998, the U.S. Patent and Trademark Office issued Trademark Registration No. 2,210,654 for the mark ADORAMA for use with photographic, video and imaging equipment, accessories and supplies, among other things in Class 9 and retail store services and mail order services featuring photographic equipment, video equipment and computers in Class 35. Complainant alleges that the ADORAMA mark has been in continuous use in the United States and worldwide for over 17 years. Accordingly, we find that the Complainant has rights in the mark ADORAMA.

The disputed domain name <adarama.com> is substantially similar to the Complainant’s mark ADORAMA. The only difference is a slight change of spelling by replacing the vowel “O” in the mark to an “a” in the domain name. Such misspellings are adequate grounds for finding confusing similarity. See Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441 (order transferring domain names <reters.com>, <reuers.com>, <reutersnews.com>, <ruters.com>, and <wwwreuters.com>). Accordingly, the Panel concludes that the domain name <adarama.com> is confusingly similar to the Complainant’s mark ADORAMA.

B. Rights or Legitimate Interests

Because Respondent has not filed a response, the Panel only has the Complaint by which to address the issue of Respondent’s rights or legitimate interests in the disputed domain name.

Complainant contends that prior to notice of this dispute by the Complainant, Respondent made no use of the domain name <adarama.com> in connection with a bona fide offering of goods or services. Complainant has not authorized or licensed Respondent’s use of its ADORAMA mark on or in connection with Respondent’s web site.

Complainant acknowledges that Respondent’s web site at <adarama.com> features links to other web sites, but argues that virtually all these links sell products that compete with the products, and in many cases are the same as products sold by Complainant under the ADORAMA mark. Complainant argues that such linking cannot be used by Respondent to establish a legitimate interest in the <adarama.com> domain name. Complainant cites to other UDRP decisions where panels have found against Respondent, LaPorte Holdings, for making similar diverting usage of other parties’ domain names. See, Krome Studios Pty., Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Nokia Corp. v. Horoshiy, Inc., LaPorte Holdings, WIPO Case No. D2004-0851.

Complainant also argues that there is no evidence that Respondent has made any legitimate use of the name “adarama” as a trademark or service mark, nor is there any evidence that Respondent is commonly known as “adarama”. Complainant points out that Respondent’s trade name is LaPorte Holdings, Inc. Complainant also argues that Respondent did not register <adarama.com> as a domain name until 2003, and cites to Medco Health Solutions, Inc. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0800 as support. Complainant also points out that a UDRP panel recently found no evidence that Respondent, LaPorte Holdings, “is a legitimate business with legitimate interests.” Krome Studios Pty. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707.

The Panel is persuaded and finds that Respondent has no rights or legitimate interests in the domain name <adarama.com>.

C. Registered and Used in Bad Faith

Complainant argues that Respondent’s registration in 2003, of the <adarama.com> domain name, which is a misspelling of Complainant’s <adorama.com> domain name originally registered in 1997, suggests that Respondent knew of the Complainant’s use of the term ADORAMA in its company name, registered trademark and domain name and that such misspelling was intentional, citing Medco Health Stationery, Inc. v. LaPorte Holdings, Inc., supra. Courts have described this conduct as “typosquatting” and deemed it a “classic example of bad faith domain name registration.” Shields v. Zuccarini, [2001] USCA3 120; 254 F.3d 476 (3d Cir. 2001).

Complainant also argues that Respondent has been found by other UDRP panels to have registered and used other domain names in bad faith and that these earlier findings should be taken into consideration in finding registration and use in bad faith in this instance. See Medco Health Stationery, Inc. v. LaPorte Holdings, Inc. WIPO Case No. D2004-0800; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Nokia Corporation v. Horoshiy, Inc., LaPorte Holdings, WIPO Case No. D2004-0851. Complainant also invites this Panel to follow the holding in Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430, where a panel found that a respondent’s involvement in a large number of cases under the Policy is itself evidence of bad faith.

But, perhaps the most persuasive evidence of bad faith registration and use in this case is Respondent’s registration of a misspelling of a previously registered domain name <adorama.com> and registered trademark, ADORAMA, to operate a web site that provides links to other sites which sell goods substantially similar to those the Complainant sells. The Policy states that evidence of registration and use of a domain name in bad faith can be shown “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.” Policy, paragraph 4(b).

Here, the conduct of Respondent strongly suggests a deliberate attempt to divert traffic from Complainant’s web site for the Respondent’s commercial gain and to the detriment of the Complainant by creating just such a likelihood of confusion. Such conduct is persuasive evidence of bad faith. See VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.

Accordingly, the record contains sufficient evidence for this Panel to conclude that the Respondent has registered and is using the disputed domain name <adarama.com> in bad faith.

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 <adarama.com> be transferred to the Complainant.

Kevin C. Trock
Sole Panelist

Dated: June 1, 2005