Ladera Ranch Community Services and DMB
Ladera, LLC v. Core Market Research, Inc. c/o Bo Kelleher
Claim
Number: FA0506000493076
Complainants are
Ladera Ranch Community Services and DMB Ladera, LLC (collectively, “Complainant”), represented by Leslie C. McKnew, of Morgan, Lewis &
Bockius, LLP, One Market,
Spear Street Tower, San Francisco, CA 94105.
Respondent is Core Market
Research, Inc. c/o Bo Kelleher (“Respondent”) 12
Pleasanton Lane, Ladera Ranch, CA 92694.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <laderalive.com>, registered with Primus
Telco Pty Ltd d/b/a Primusdomain/Planetdomain.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 10, 2005.
On
June 14, 2005, Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain confirmed
by e-mail to the National Arbitration Forum that the domain name <laderalive.com>
is registered with Primus Telco Pty Ltd d/b/a Primusdomain/Planetdomain and
that Respondent is the current registrant of the name. Primus Telco Pty Ltd
d/b/a Primusdomain/Planetdomain has verified that Respondent is bound by the Primus
Telco Pty Ltd d/b/a Primusdomain/Planetdomain 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
June 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 5, 2005 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@laderalive.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
July 9, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <laderalive.com>
domain name is confusingly similar to Complainant’s LADERALIFE mark.
2. Respondent does not have any rights or
legitimate interests in the <laderalive.com> domain name.
3. Respondent registered and used the <laderalive.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Ladera Ranch Community Services operates a
popular intranet site for the residents of Ladera Ranch community in Orange
County, CA under the <laderalife.com> domain name. The website provides residents of Ladera
Ranch, CA with information regarding the community, upcoming events, message
boards, clubs, and email services.
Complainant, DMB Ladera, LLC owns trademark rights in the
state of California for the LADERALIFE mark (Reg. No. 59,536 issued August 11,
2004), which licenses the use of the mark exclusively to Ladera Ranch Community
Services. In addition, DMB Ladera, LLC
has registered the LADERA RANCH mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,656,060 issued December 3, 2002).
Respondent
registered the <laderalive.com> domain name on January 7,
2005. Respondent’s domain name
originally resolved to a website offering many of the same services provided on
the DMB Ladera intranet site in addition to hyperlinks to various commercial
websites. Respondent’s domain name no
longer resolves to an active domain name.
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. 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 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
sufficiently established rights in the LADERALIFE mark through its registration
with the California Secretary of State.
See Lee Enters., Inc. v. Polanski, FA 135619 (Nat. Arb. Forum
Jan. 22, 2003) (finding evidence that the complainant had established rights in
the BILLINGS GAZETTE mark through registration with the Montana and Wyoming
state trademark officials); see also Quality Custom Cabinetry, Inc. v.
Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002)
(finding that the complainant’s trademark registrations in Pennsylvania and New
Jersey operated as evidence that the complainant had sufficient standing to
bring a claim under the UDRP).
Respondent’s <laderalive.com>
domain name is confusingly similar to Complainant’s LADERALIFE mark. Simply changing the letter “f” to “v” fails
to significantly distinguish the domain name from the registered trademark
pursuant to Policy ¶ 4(a)(i). 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 Belkin Components v. Gallant,
FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain
name confusingly similar to the complainant's BELKIN mark because the name
merely replaced the letter “i” in the complainant's mark with the letter “e”); see
also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)
(finding that the domain names <tdwatergouse.com> and
<dwaterhouse.com> are virtually identical to the complainant’s TD
WATERHOUSE name and mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts Respondent has no rights or legitimate interests in the domain name <laderalive.com>. By failing to submit a response, Respondent
has not demonstrated any rights or legitimate interests in the domain name and
the Panel construes this as evidence of lack of rights and legitimate interests
pursuant to Policy ¶ 4(a)(ii). 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 assertions in this
regard.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat.
Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a
Response, “Complainant’s submission has gone unopposed and its arguments
undisputed. In the absence of a
Response, the Panel accepts as true all reasonable allegations . . . unless
clearly contradicted by the evidence.”).
Respondent is
using the confusingly similar <laderalive.com> domain name to
operate a website that offers services in direct competition with those offered
by Complainant under its registered trademark.
In addition, Respondent provides hyperlinks to various commercial
websites through which Respondent presumably receives referral fees. Such a competing and diversionary use is not
a use in connection with a bona fide offering of goods and services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services.”); 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.”).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by or
has conducted business under the disputed domain name. Rather Respondent’s company, which owns
rights to the <laderalive.com> domain name, operates under the
name Core Market Research, Inc.
Moreover, no evidence has been brought forth showing Respondent had
authorization to register domain names featuring any variation of Complainants’
LADERALIFE mark. Therefore, the Panel
finds Respondent has not established rights or legitimate interests in the <laderalive.com>
domain name under Policy ¶ 4(c)(ii). See
Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat.
Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by
<aolcamera.com> or <aolcameras.com> because the respondent was
doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”);
see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <laderalive.com> domain name to offer competing services
and to divert Internet users to other commercial websites using a system of
hyperlinks, through which Respondent presumably earns click-through fees. Because Respondent’s <laderalive.com>
domain name is confusingly similar to Complainant’s LADERALIFE mark, consumers
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Therefore, use of the disputed domain name constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if the respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Am. Online,
Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding bad faith where the respondent registered and used a domain name
confusingly similar to the complainant’s mark to attract users to a website
sponsored by the respondent).
Furthermore,
Respondent registered the <laderalive.com> domain name with actual
or constructive knowledge of Complainant’s rights in the LADERALIFE mark as the
mark was registered with the California Secretary of State and Respondent is a
resident of California. Moreover, the
Panel infers that Respondent registered the domain name with actual knowledge
of the mark due to the obvious connection between the content and services
offered on Respondent’s website with the content and services provided on the
Complainant’s website. Respondent’s
website, accessed through the <laderalive.com> domain name, even
goes so far as to point out the cost difference in website creation and
maintenance between Complainant’s website and Respondent site, presenting
Respondent’s nearly identical Respondent site as the low-cost, functional
alternative. Registration of a domain
name confusingly similar to another’s mark despite actual or constructive
knowledge of the mark holder’s rights is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding
that “there is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr.
24, 2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the Complainant’s mark when it registered the subject
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 <laderalive.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
July 21, 2005
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