LTD Commodities LLC v. Herman Bowman
d/b/a sci
Claim Number: FA0310000203131
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 Herman Bowman d/b/a sci, 2531 E. Devon Avenue, Elk Grove Village, IL 60007 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ltdcommoditys.com> registered with Melbourne
It, Ltd. d/b/a Internet Names Worldwide.
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 (the "Forum")
electronically October 10, 2003; the Forum received a hard copy of the
Complaint October 15, 2003.
On
October 13, 2003, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed
by e-mail to the Forum that the domain name <ltdcommoditys.com> is
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a
Internet Names Worldwide verified that Respondent is bound by the Melbourne It,
Ltd. d/b/a Internet Names Worldwide 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
October 16, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of November 5, 2003, 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@ltdcommoditys.com by
e-mail.
On
October 24, 2003, Respondent submitted to the Forum by fax the following in its
entirety:
As per your request, I am sending you an
explanatory letter regarding the involvement with domain name
“ltdcommoditys.com” that Herman Bowman, SCI had.
As you are well aware, this domain
listing is not active or connected to any site. In a promotion by our marketing
department, the “ltdcommoditys.com” name was rendered. Before further business
actions by SCI could take place, we deemed the name as inappropriate and
unethical. Thus, it has never been, and never will be activated as a live
Internet link. The only reason that it remains listed as being “owned” by SCI
is because we are simply waiting [for] the registration of said name to expire.
This letter will serve as your “cease and
desist” compliance. We, therefore, are more than willing to transfer said name
to LTD Commodities effective forthwith. Thank you for your cooperation and
please feel free to contact me at any time regarding this matter.
Having
received no formal 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
November 12, 2003, 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 formal 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 registered by Respondent,
<ltdcommoditys.com>, is confusingly similar to Complainant’s LTD
COMMODITIES mark.
2. Respondent has no rights to or legitimate
interests in the <ltdcommoditys.com> domain name.
3. Respondent registered and used the <ltdcommoditys.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns
trademark registrations with the United States Patent and Trademark Office for
the LTD COMMODITIES mark (Registration Number 2,409,188, registered on November
28, 2000) and the LTD COMMODITIES, INC. mark (Registration Number 2,315,412,
registered on February 8, 2000) in relation to the catalog mail-order
distributorship for general merchandise, including, inter alia, toys,
jewelry and watches.
Complainant has
been in business since 1963 in the field of catalog mail-order
distributorships. Complainant also conducts business from its commercial
website at the <ltdcommodities.com> domain name, which has been in
existence since May 31, 1996.
Respondent
registered the <ltdcommoditys.com> domain name April 5, 2002.
Respondent has not linked the disputed domain name to an active website since
the domain name was registered.
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 the Panel 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
demonstrated by extrinsic proof in this proceeding that it has rights in the
LTD COMMODITIES mark through registration with the USPTO. 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”).
Complainant
contends that the domain name registered by Respondent, <ltdcommoditys.com>,
is confusingly similar to Complainant’s LTD COMMODITIES mark because the
disputed domain name appropriates a simple misspelling of Complainant’s mark by
substituting the letters “ie” with the letter “y.” Respondent’s appropriation
of a misspelled version of Complainant’s mark does not serve to significantly
differentiate the domain name from the mark for purposes of Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Zuccarini, FA
94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8,
2000) (finding that the domain names, <davemathewsband.com> and
<davemattewsband.com>, are common misspellings and therefore confusingly
similar).
The Panel finds
that Complainant has established Policy ¶ 4(a)(i).
Respondent has
not come forward with a formal Response countering the Complainant’s
substantive allegations in this proceeding. Therefore, the Panel accepts all
reasonable allegations and inferences in the Complaint as true. See 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”); see also Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant’s allegations are true unless clearly contradicted
by the evidence).
Moreover, based
on Respondent’s failure to counter the allegations in the Complaint, the Panel
presumes that Respondent lacks any rights to or legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a Response, Respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where Respondent fails to respond).
Respondent has
not linked the <ltdcommoditys.com> domain name to an active
website since the domain name was registered April 5, 2002. Furthermore, in its
communications with Complainant and the Forum, Respondent offered to transfer
the <ltdcommoditys.com> domain name registration to Complainant. The
Panel finds that Respondent’s failure to use the disputed domain name for a
period of more than one and a half years and its offer to transfer the domain
name registration suggest that Respondent lacks rights to and legitimate
interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Ritz-Carlton Hotel v. Club Car Executive,
D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the
dispute, Respondent had not used the domain names in connection with any type
of bona fide offering of goods and services); see also Am. Home Prod. Corp. v. Malgioglio,
D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in
the domain name <solgarvitamins.com> where Respondent merely passively
held the domain name); see also
Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7,
2001) (finding that Respondent’s willingness at the onset of the Complaint to
transfer the domain names shows it lacks any legitimate interest or rights in
the names); see also Land O’ Lakes
Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001)
(finding that Respondent’s willingness to transfer upon notification of the
Complaint is evidence of its lack of legitimate interests or rights).
Respondent has not submitted any proof and no evidence in
the record indicates that Respondent is
commonly known by LTD COMMODITYS or <ltdcommoditys.com>. Thus, the
Panel finds that Respondent has no rights to or legitimate interests in the
disputed domain under Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet,
FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name
does not even correctly spell a cognizable phrase” in finding that Respondent
was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>);
see also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding Respondent
does not have rights in a domain name when Respondent is not known by the
mark).
Accordingly, the Panel finds that Complainant has
established Policy ¶ 4(a)(ii).
Respondent’s
registration and its subsequent failure to link the <ltdcommoditys.com>
domain name to any active website for more than one and a half years
demonstrates passive holding of the domain name. The passive holding of a
domain name can constitute bad faith registration and use under Policy ¶
4(a)(iii). See DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of ¶
4(a)(iii) of the Policy); see also
Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding
that Respondent made no use of the domain name or website that connects with
the domain name, and that passive holding of a domain name permits an inference
of registration and use in bad faith).
Moreover,
Respondent’s offer to transfer the <ltdcommoditys.com> domain name
registration after being served with the Complaint suggests that the disputed
domain name was registered and used in bad faith. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding
Respondent’s willingness to transfer and its failure to develop the site are
evidence of its bad faith registration and use); see also Global Media Group, Ltd. v. Kruzicevic,
FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding Respondent’s failure to
address Complainant’s allegations coupled with its willingness to transfer the
names is evidence of bad faith registration and use).
The Panel finds
that Policy ¶ 4(a)(iii) has been established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ltdcommoditys.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 26, 2003.
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