LeapFrog Enterprises, Inc. v.
Claim Number: FA0905001261649
Complainant is LeapFrog Enterprises, Inc. (“Complainant”), represented by John
A. Hughes of Townsend and Townsend and Crew LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <leapfrogconnect.com>, registered with Dynadot, LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 7, 2009; the National Arbitration Forum received a hard copy of the Complaint May 8, 2009.
On May 7, 2009, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <leapfrogconnect.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC verified that Respondent is bound by the Dynadot, LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2009, 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@leapfrogconnect.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <leapfrogconnect.com>, is confusingly similar to Complainant’s LEAPFROG mark.
2. Respondent has no rights to or legitimate interests in the <leapfrogconnect.com> domain name.
3. Respondent registered and used the <leapfrogconnect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LeapFrog
Enterprises, Inc., is a worldwide producer of educational toys and has used the
LEAPFROG mark since 1995. LEAPFROG owns
more than 240 active LEAPFROG trademark applications and registrations in more
than 40 individual countries worldwide. Complainant
holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the LEAPFROG mark (i.e., Reg. No. 2,534,368
issued January 29, 2002).
Respondent registered the <leapfrogconnection.com> domain name December 27, 2008, some six years after Complainant established rights in the LEAPFROG mark. Respondent is using the disputed domain name to redirect Internet users seeking Complainant’s products to a website featuring other websites, which are unrelated to Complainant’s mark or that feature products that compete with Complainant, through the use of click-through advertisements.
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."
Given 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 the Panel finds to be appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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 established rights in the LEAPFROG mark through
registration of the mark with the USPTO.
See Microsoft Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has
established rights in the MICROSOFT mark through registration of the mark with
the USPTO.”); see also
Respondent’s disputed <leapfrogconnect.com>
domain name
is confusingly similar to Complainant’s LEAPFROG mark because Respondent’s
domain name incorporates the LEAPFROG mark, adds the generic descriptive word “connect,”
and adds the generic top-level domain “.com.”
The Panel finds that these minor variations to Complainant’s registered
mark do not negate the confusingly similar aspects of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent has no rights to or legitimate interests in the <leapfrogconnect.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have such rights to or legitimate interests pursuant to Policy ¶ 4(a)(ii). Given Respondent’s failure to respond to the Complaint, the Panel may presume that Respondent does not have rights or legitimate interests in the disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent is using the <leapfrogconnect.com>
domain name
to operate a website featuring links to websites unrelated to Complainant’s
mark or that sell and advertise directly competitive products. Respondent’s use of a domain name that is
confusingly similar to Complainant’s LEAPFROG mark to redirect Internet users
interested in Complainant’s products to a website featuring other websites unrelated
to Complainant’s mark, or that sell and advertise competing products, are not
uses in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i)
and are not legitimate noncommercial or fair uses of the domain name pursuant
to Policy ¶ 4(c)(iii). See
Hewlett-Packard Co. v. Collazo,
FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s
use of the <hpcanada.com> domain name to post links to commercial
websites and subject Internet users to pop-up advertisements was not a bona
fide offering of goods or services or a legitimate noncommercial or fair
use of the domain name); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”).
Respondent offered no evidence, and no evidence in the
record suggests that Respondent is commonly known by the <leapfrogconnect.com> domain
name. Complainant asserts that
Respondent has no license or agreement with Complainant authorizing Respondent
to use the LEAPFROG mark, and the WHOIS information identifies Respondent as
“Chad Moston.” Thus, Respondent has not
established rights or legitimate interests in the <leapfrogconnect.com> 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 the respondent does not have rights in a domain
name when the respondent is not known by the mark); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat.
Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish
rights and legitimate interests in the <emitmortgage.com> domain name as
the respondent was not authorized to register domain names featuring the
complainant’s mark and failed to submit evidence of that it is commonly known
by the disputed domain name); see
also Ian Schrager Hotels,
L.L.C. v. Taylor, FA 173369 (Nat. Arb.
Forum Sept. 25, 2003) (finding that without demonstrable evidence to support
the assertion that a respondent is commonly known by a domain name, the assertion
must be rejected).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent is using the <leapfrogconnect.com> domain name, which is confusingly similar to Complainant’s LEAPFROG mark, to redirect Internet users to Respondent’s website that features websites that sell and advertise products that attempt to compete with Complainant’s products. The Panel finds that such use constitutes a disruption of Complainant’s business and supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Such use also permits the Panel to make an inference that
Respondent receives click-through fees for diverting these Internet users to a
website that seeks to compete with Complainant.
Because Respondent’s domain name is confusingly similar to Complainant’s
LEAPFROG mark, Internet users accessing Respondent’s domain name also may
become confused as to Complainant’s affiliation with the resulting website and
disputed domain name. Therefore, Respondent’s
use of the <leapfrogconnect.com>
domain name supports findings that Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also
The Panel finds Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leapfrogconnect.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 17, 2009.
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